BioCare Limited v. UK Scientific.com Limited

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BioCare Limited v. UK Scientific.com Ltd

Case No. D2002-0345

1. The Parties

The Complainant is BioCare Limited, Lakeside, 180 Lifford Lane,

Kings Norton, Birmingham B30 3NT, United Kingdom.

The Respondent is UK Scientific.com Ltd, Scientia House, 20 Tuxford Close,

Oakwood, Derby DE21 2HH, United Kingdom.

2. The Domain Names and Registrar

The Domain Names are <biocare-diagnostics.com> and <biocarediagnostics.com>:

The Registrar of the Domain Names is Tucows Inc.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center

("Center") by email on April 11, 2002, and in hardcopy

form on April 15, 2002. The Center has verified that the Complaint

satisfies the formal requirements of ICANN’s Uniform Domain Name Dispute

Resolution Policy ("Policy"), ICANN’s Rules for Uniform Domain

Name Dispute Resolution Policy ("Rules") and WIPO’s Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental

Rules") and that payment was properly made. The Administrative Panel

("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph

2(a). Tucows Inc. ("the Registrar") has confirmed that the domain

names <biocare-diagnostics.com> and <biocarediagnostics.com>

("the Domain Names") were registered through the Registrar and

that UK Scientific.com Ltd ("the Respondent") is the current registrant.

The Registrar has further confirmed that the Policy is applicable to the

Domain Names.

On April 24, 2002 the Center notified the Respondent of the Complaint in

the usual manner and informed the Respondent inter alia that the last day

for sending its Response to the Complainant and to the Center was May 14, 2002.

The Response was received by the Center by email on May 11, 2002,

and in hard copy form on May 16, 2002.

On May 22, 2002, the Center received a Supplemental Filing from

the Complainant. On May 24, 2002, the Center received a Supplemental

Filing from the Respondent. The Panel has been sent the documents, but no

reason has been given why the Panel should depart from the normal procedure

(Complaint and Response and no more) and the Panel declines to admit them

into the evidence.

The Panel was properly constituted. The undersigned Panelist submitted

a Statement of Acceptance and Declaration of Impartiality and Independence.

4. Factual Background

The Complainant was incorporated in the United Kingdom on September 19,

1985. It has traded under the name BIOCARE since at least 1988. It is the

proprietor of inter alia trade mark registration number 2,048,267 dated

December 12, 1995 for BIOCARE (word) in Class 35 for pharmaceutical preparations

etc.

The Complainant operates a website at http://www.biocare.co.uk. The domain

name <biocare.co.uk> was registered on April 29, 1999.

The Respondent was incorporated in the United Kingdom on May 23, 2000.

According to the Companies Registry printout exhibited to the Complaint

the Respondent’s business area is "technical testing and analysis".

At some stage in early to mid 2001 (the Complaint says June 2001)

John Stirling, a director of the Complainant, entered into discussions with

Chris Evans, a director of the Respondent, over a joint venture to market

medical diagnostic screening kits. The vehicle for the joint venture was

to be Biocare Diagnostic Services International Limited (BDSI), which was

incorporated in the United Kingdom on September 5, 2000, under

the name Biocare Laboratories Limited. The name change took place on August 1, 2001.

The shareholders in BDSI were to include Messrs. Stirling and Evans.

In the course of September 2001 a bank account was set up for BDSI.

There is a dispute as to when this occurred but Barclays Bank PLC, Birmingham

Kings Heath Solihull Group of Branches regards the opening of the account

as having taken place on September 20, 2001 (Annex 29 to the Complaint).

On September 28, 2001, the Respondent registered the Domain Names

along with the domain names <biocarediagnostics.co.uk> and <biocare-diagnostics.co.uk>.

In due course the BDSI website was set up at http://www.biocare-diagnostics.co.uk

On November 5, 2001, Mr. Stirling signed a certificate certifying

that Mr. Evans was the registered holder of 50 shares in BDSI.

Within a few days of the inception of the business (Mr. Stirling in a letter

to Mr. Evans of November 26, 2001, identifies the date of

inception of the business as being November 9, 2001) the joint venture collapsed.

By that letter of November 26, 2001, Mr. Stirling and his

wife called for BDSI to cease trading.

On December 17, 2001 representatives of the Complainant wrote to Mr. Evans

and the Respondent. In that letter they state that any license from Biocare

Limited for BDSI to use the name BIOCARE has been terminated. On the same

date, Mr. Stirling on behalf of the Complainant writes to BDSI confirming

termination of any previous license for BDSI to use the name BIOCARE as

a trade mark or as part of its trading style.

On January 7, 2002 the Respondent issues an invoice to BDSI and the Complainant

for expenses alleged to have been incurred for and on behalf of BDSI. The

invoice is for a total of £9,807.43 plus VAT and includes within it a VAT

inclusive charge of £34.16 for domain name registration expenses.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar

to its trade mark BIOCARE.

The Complainant contends that the Respondent never had any rights or legitimate

interests in respect of the Domain Names and points to the inter-partes

correspondence in the course of which (December 18, 2001) Mr. Evans,

on behalf of the Respondent, acknowledges that the Respondent "has

no interest and never will have any interest in using the names Biocare,

Biocare Diagnostics …"

The Complainant points out that any license to use the name Biocare was

a license to BDSI, not the Respondent.

The Respondent’s explanation for the registration of the Domain Names in

the name of the Respondent is that at the time BDSI "did not have a

credit card facility or bank account". The Complainant dismisses that

as a false explanation, because the bank account was opened on September 20, 2001.

The Complainant further contends that the Respondent registered the Domain

Names in bad faith and is using them in bad faith.

In support of the bad faith registration claim the Complainant puts forward

the following:-

1. The Respondent had no rights or legitimate interests in respect

of the Domain Name.

2. The Respondent failed to make the Complainant aware of the

Domain Name registrations or deliberately concealed the fact.

3. "When the Complainant did have knowledge of registration

of the Domain Names through the searches made by its authorized representative

on December 12, 2001, and the Respondent then began to assert

post facto that it did have a right or legitimate interest,

it was then too late for it to acquire the same, since it could only

do so by virtue of the existence of Biocare Diagnostics, which had

by that time ceased both to trade and to have any licence from the

Complainant to use the Biocare name and trade mark".

[NB the Panel quotes this section in full partly because the Panel

does not understand how this supports the bad faith registration claim,

but partly also because it seems to acknowledge that when BDSI was

alive the Respondent might have had an excuse for registering (if

not a legitimate interest in respect of) the Domain Names.]

4. The false reason given by Mr. Evans for having registered the

Domain Names in the name of the Respondent.

In support of the bad faith use claim the Complainant cites the fact that

the Respondent will only agree to transfer the Domain Names to the Complainant

if the Complainant pays the full amount of the invoice dated January 7, 2002,

i.e. a sum well in excess of the Respondent’s registration expenses.

B. Respondent

The Respondent states that it registered the Domain Names in good faith

for the benefit of BDSI. One of the ‘.uk’ domain names was used for the

benefit of the BDSI website.

The Domain Names were registered in the name of the Respondent because

at that time Mr. Evans did not have access to relevant information

about BDSI’s bank account.

At all times BDSI was aware of the existence of the Domain Name registrations

and the website. The Respondent expresses surprise at the Complainant’s

claimed ignorance of the Domain Name registrations and the website given

that the BDSI notepaper used by Mr. Stirling identifies the website

and necessarily therefore one of the domain names (albeit one of the names

in the .uk domain).

6. Discussion and Findings

General

At the outset the Panel wishes to make clear that the Policy is no substitute

for trade mark infringement and passing off proceedings. Still less is it

a means of resolving what in this case is evidently a bitter dispute between

the parties and their directors.

The Policy is designed to deal with cyber squatting which in the main is

the practice of deliberately registering someone else’s trade mark as or

as part of a domain name with the intention of causing damage to the trade

mark owner. The intention may be to extort money from the trade mark owner

or it may be to block the trade mark owner from registering the domain name

himself, or it may be with a view to disrupting his business or with a view

to deceiving internet users and thereby deriving a free ride on the back

of the trade mark owner’s goodwill.

In very broad terms the essential question for the Panel is this: on September 28, 2001,

when the Respondent registered the Domain Names did it do so with the intention

of causing damage of any kind to the Complainant?

The matters required to be proved by the Complainant are set out in paragraph

4(a) of the Policy, namely:-

(i) The Domain Names are identical or confusingly similar to a

trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect

of the Domain Names; and

(iii) The Domain Names have been registered in bad faith and are

being used in bad faith.

Identical or confusingly similar

The Domain Names comprise the Complainant’s trade mark followed by the

descriptive word "diagnostics" and then the generic ‘.com’ suffix.

While "diagnostics" does not fall within the scope of the Complainant’s

trade mark registration, it is manifestly within the broad scope of activity

that the Complainant wished to become involved in, when it participated

in the setting up of BDSI.

The Panel finds that the Domain Names are confusingly similar to a trade

mark in which the Complainant has rights.

Respondent’s Rights or Legitimate Interests

In the view of the Panel there is an important difference between having

on the one hand a right or legitimate interest in respect of a domain name

and on the other hand a legitimate excuse for having registered that domain

name.

It is not in dispute that the Domain Names are (or were) names exclusively

referable to BDSI. The Respondent never had any interest whatsoever in respect

of the Domain Names.

The Panel finds that the Respondent has and had no rights or legitimate

interests in respect of the Domain Names.

Bad Faith

The Complainant’s contention under this head stands or falls on the allegation

that the Respondent’s reason for having registered the Domain Names is false.

For the allegation to succeed, the Complainant has to show that the Respondent

was aware of the existence of the bank account and the credit card details.

Ordinarily, when registering domain names the most convenient way of doing

it, if one does not have an account with the registrar, is to effect registration

by telephone or online and giving one’s credit card details. The Panel finds

it significant that none of the documents put before it mentions any credit

card facility.

Furthermore, in this context the Panel attaches weight to two of the annexes

to the Complaint. Annex 27 is a one-page extract from a letter from Mr.

Evans to the Complainant’s representative. One of the paragraphs of the

exhibited page starts "we were not permitted access to the company

bank details". Annex 28 comprises minutes produced by the Complainant

of a meeting with the bank, which is alleged to have taken place on September 7, 2001.

There is a dispute as to the date of the meeting and the Respondent claims

not to have approved the minutes. Nonetheless, Mr. Stirling is reported

to have told the bank manager "we want to control the finances".

In the context in which that was said, the "we" clearly refers

to the Complainant.

From the documentation put before the Panel by the Complainant the Panel

has gained the impression that Mr. Stirling was very much the controlling

force behind the joint venture and wished to maintain close control of its

financial affairs.

The Panel finds on the balance of probabilities that as at September 28, 2001,

Mr. Evans and the Respondent knew nothing of the details surrounding

BDSI’s bank account/credit card facilities and that in order to get the

Domain Names registered for the benefit of BDSI they adopted the sensible

and most convenient approach available to them, which was to use the Respondent’s

credit card for the purpose. At that stage (September 28, 2001)

there is no reason to suppose that the Respondent or Mr. Evans had

any ulterior bad faith motive.

In reviewing the evidence on this topic the Panel was distinctively unimpressed

with the Complainant’s declared ignorance of the website when the paper

Mr. Stirling was using identified it.

Even if the demand for payment of the full invoice in return for the Domain

Names is "over the top" (and the Panel makes no finding to that

effect), it is of no assistance to the Complainant. The Complainant has

to prove that the Respondent deliberately registered the Domain Names with

that demand or some such demand in mind. The Complainant has failed to satisfy

the Panel that that was the Respondent’s intention on September 28, 2001.

The Panel finds that the Complainant has failed to prove that the Respondent

registered the Domain Names in bad faith and is using them in bad faith.

7. Decision

The Complaint is dismissed.

Tony Willoughby

Sole Panelist

Dated June 5, 2002