Brightwater Engineering Ltd v Canterbury Koi And Aquatics [2005] DRS 02554 (13 June 2005)

     Nominet UK Dispute Resolution Service

DRS  NO. 2554

BRIGHTWATER ENGINEERING LIMITED -V- CANTERBURY KOI AND AQUATICS

Decision of Independent Expert

1.	Parties
Complainant:  		Brightwater Engineering Limited
Country: 		GB

Respondent:		Canterbury Koi and Aquatics
Country:		GB

2.	Domain Names
biobead.co.uk
bio-bead.co.uk
(referred to as “the Domain Names”)

3.	Procedural Background
The Complaint was submitted to Nominet, and hard copies of the Complaint were received in full by Nominet, on 14 April 2005.  On 19 April 2005, the Complaint was validated by Nominet.  On the same day, the Complaint was sent to the Respondent, by post, to the address in the UK provided in the whois information and by e-mail.  The Respondent was informed that it had 15 working days, that is, until 12 May 2005, in which to respond to the Complaint. 
No response was filed by the Respondent and so mediation was not possible.   On 19 May 2005, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (“the Policy”).
On 20 May 2005, 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.

4.	Outstanding Formal/Procedural Issues
No response
The Respondent failed to submit a response to Nominet within the time stipulated in paragraph 5a of the Nominet UK Dispute Resolution Service Procedure (the “Procedure”).  Paragraph 15b 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 15c of the Procedure states 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.  In the circumstances, the Complainant’s assertions of fact are unchallenged by the Respondent and been accepted by the Expert unless there is some specific reason not to do so.
Deficiencies in the Complaint
The Complainant asserts that it has Rights in the mark BIOBEAD and that the registrations of the Domain Names by the Respondent are Abusive Registrations.  However, it has submitted only limited evidence to support its assertions.  
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.   As discussed in the decisions given in Chivas Brothers Limited v David William Plenderleith (DRS 292) and HIT Entertainment plc v Tom Loosemore (DRS 1544), there are circumstances in which it is appropriate for the Expert to request further statements or information from the parties.  However, in this case, 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.  The position is not that a single, well defined piece of information is required in order to complete an otherwise comprehensive case.  Rather the Complaint is generally deficient, as will become apparent.  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.
Accordingly, the Expert will consider the merits of the Complaint on the basis of the information provided by the Complainant.
5.	The Facts
The material facts appear to be that:

i.	The Complainant asserts that it trades as Brightwater Engineering Limited. It has a registered trade mark BIOBEAD, registered in 1992 in Class 11. It owns a subsidiary, Biobead Limited. This company apparently operates a “BIOBEAD” process which is stated to be “an upward filtration system for water purification used for secondary and tertiary treatment applications”. Exactly what this means in layman’s terms is not explained. Biobead Limited apparently has over 50 plants under operation or under construction with UK water utility companies, This suggests that the projects are large scale and that Biobead Limited’s customers are typically water utility companies. This is an inference as the Complainant has failed to provide any evidence of its activities or those of the Respondent. No evidence whatsoever has been supplied to explain how the mark BIOBEAD  is used to promote these products or to explain why the mark is owned by the Complainant when the business described is that of its subsidiary. There is no evidence of turnover or of use of the mark.
ii.	The Complainant asserts that “Biobead is the leading Biological Aerated Flooded Filter (BAFF) technology”. 
iii.	The Complainant states that the Respondent was incorporated as a company with company number 04501570 on 1 August 2002 and that the Respondent registered the Domain Names on 17 July 2004 and 21 August 2004 respectively; this is confirmed by the Whois printouts dated12 April 2005, filed by the Complainant.  
iv.	The Complainant states that the Respondent produces a “biological and mechanical pond filter which also uses buoyant beads in the water to aid the filtration process”. As with every Complaint, Nominet has provided the Expert with a copy of a screen shot of the home pages of the websites to which the Domain Names resolve.  As at 19 April 2005, both home pages contain a statement: “power bead bubble bead filter…the ultimate in biofiltration” accompanied by what appear to be a multi-tonal swirl logo, bubbles and photographs of the Respondent’s products.
v.	The Complainant states that the name BIOBEAD was used by the Respondent to “promote identical goods and services to those which the Complainant produces” and that the public could “easily” be confused by the Respondent’s use of the Domain Names “with regards to the origin of the products”.  It is difficult to accept this assertion for two reasons. First, no evidence is submitted in support of this assertion (in fact, other than in relation to the Domain Names, there is no evidence that the Respondent was using the word BIOBEAD in relation to its products). Second, the evidence that is available suggests that the Complainant’s product is an industrial product aimed at water utility companies whereas the product of the Respondent (Canterbury Koi and Aquatics) is presumably aimed at people who keep fish as a hobby.  
vi.	The Complainant contacted the Respondent to seek transfer of the Domain Names to it. On 8 September 2004, the Complainant’s representatives wrote to a Mr. Philip Norris at the Respondent.  In this letter, they referred to a letter dated 20 August 2004 which the Complainant had written to the Respondent, apparently regarding the Domain Names. This letter has not been filed as evidence.  In their letter of 8 September 2004, the Complainant’s representatives asserted the Complainant’s registered rights in the Mark and stated that the Complainant would be prepared to pay the Respondent the original costs of registering the “domain name”, provided it transferred the domain name to it.  
vii.	Mr. Philip Norris of the Respondent replied to the Complainant’s representatives’ letter of 8 September 2004 on 12 September 2004 stating that he was going on holiday for two weeks, was awaiting legal advice and would contact the Complainant’s representatives on his return.  The Complainant’s representatives subsequently wrote to the Respondent on 14 October 2004, 15th  November 2004 and 23rd December 2004 but no further response was received from the Respondent.
viii.	The Complainant asserts that in or around, January 2005 the Respondent removed all reference to the name BIOBEAD from its websites, but continued to use the Domain Names.  Its representatives wrote to the Respondent on 10 February 2005 raising these points and indicating that if the Respondent did not transfer the Domain Names to the Complainant, they were instructed to raise proceedings with Nominet to effect the transfer of the domain names.
ix.	The Complainant states that it is unable to “effectively market [its] product to potential customers as any general searches on the internet direct traffic to the websites of the Respondent”. However, it has filed no evidence  - such as copies of pages from search engines, showing the results of searches conducted for the name BIOBEAD -  in support of this contention.   
6.	The Parties’ Contentions
Complainant

The Complainant’s case is that the Domain Names (i) are identical or similar to a name or mark in which the Complainant has Rights and (ii) in the hands of the Respondent are Abusive Registrations as:

(i)	the Respondent has used the Domain Names in a way which causes confusion; customers are led to believe that there is a connection between the Respondent’s product and the Complainant’s product due to the Respondent’s use of the Mark;

(ii)	by using the name BIOBEAD in the Domain Names, the Respondent is taking unfair advantage of and causing unfair disruption and detriment to the Complainant’s business; and

(iii)	the Respondent has ceased to make reference to the name BIOBEAD on its websites, therefore it has no interest in continuing to use the Domain Names other than to prevent the Complainant from registering them.

The Complainant also contends that the Respondent and its business:-

(a)	has no connection with the name BIOBEAD and the Respondent has no rights to and in the trade mark BIOBEAD;

(b)	is making use of a descriptive name which has no connection with its product, whereas the name has a connection with the Complainant’s product;

(c)	is not making any legitimate use of the Domain Names; the Complainant says that the Respondent’s registration of the Domain Names will serve no purpose other than to confuse the public and divert potential customers from the Complainant’s products to those of the Respondent; and

(d)	the Domain Names are not being used in good faith. 

Respondent

As mentioned above, the Respondent has not filed a response.

7.	Discussion and Findings
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 Names (paragraph 2(a)(i) of the Policy); and
•	the Domain Names, in the hands of the Respondent, constitute Abusive Registrations (paragraph 2(a)(ii) of the Policy).
Paragraph 2a(i) - the Complainant’s Rights
The Complainant asserts that the Domain Names are identical or similar to a name or mark in which the Complainant has Rights.  The definition of “Rights” as set out at paragraph 1 of the Policy is that the term “includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business.”  
The Expert accepts that the Domain Names are similar to, and arguably identical to, the Mark, it being usual to ignore the “.co.uk” suffix.  The addition of a hyphen between “BIO” and “BEAD” in one of the Domain Names is of minor, if any, significance.
On the basis that the Complainant is the registered proprietor of the Mark and, as set out above, the Domain Names are similar to, and arguably identical to, the Mark. Although the Complainant is the registered proprietor of the Mark, it has submitted no evidence to show that it actually uses the Mark.  It has not, for example, provided copies of pages from any website it may have or marketing material.  It claims that it has a subsidiary, Biobead Limited, which operates the “Biobead process” which suggests that it is Biobead Limited which is using the Mark.  
The only evidence submitted to evidence the Complainant’s rights in BIOBEAD is the trade mark registration certificate and the fact that a company asserted to be a subsidiary of  the Complainant is called Biobead Limited. This is unsatisfactory.  A very substantial amount of guidance is provided by Nominet on its website as to the nature of the evidence which should be submitted in support of a Complaint.  This guidance, whilst not formally part of the Policy or Procedure, is plainly intended to help Complainants understand the evidential standards they are required to meet. It is not unfortunate if Complainants (particularly those who have professional assistance in preparing their Complaints) do not take account of this guidance.
Against this concern, however, needs to be put the fact that the Respondent has failed to take the opportunity to challenge any part of the Complainant’s case. Accordingly, by a narrow margin and despite the paucity of evidence the Expert finds that the Complainant has Rights in the name BIOBEAD.
Paragraph 2a(ii) - Abusive Registration
The Complainant also has to show that the Domain Names are Abusive Registrations.  Paragraph 1 of the Policy defines an “Abusive Registration” as a Domain Name which either:-
(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 Names are Abusive Registrations are set out at paragraph 3 of the Policy; it is nonetheless for the Complainant to explain why the Domain Names in the hands of the Respondent should be regarded as Abusive Registrations.
The Complainant asserts that the registrations of the Domain Names are Abusive Registrations on the following grounds:-
Paragraph 3a.i.B: Blocking Registration against a name in which the Complainant has Rights
The relevant point at which to assess whether or not the Domain Names are blocking registrations is at the time the Domain Names were registered or otherwise acquired.  

The Complainant has provided no evidence to show that the Respondent was aware of the Complainant, its business or the name BIOBEAD at the time it registered the Domain Names.  In fact, in the letter to the Respondent dated 8 September 2004 (filed as evidence), the Complainant’s representatives acknowledged that the Complainant was prepared to accept that the Respondent may have registered the “domain name…due to a lack of knowledge of their registered trade mark”.  If the Respondent did not have knowledge of BIOBEAD when it registered the Domain Names, it is difficult to see how it registered them for the purpose of blocking registrations against a name in which the Complainant had Rights.  In the absence of evidence from the Complainant, the Expert cannot make assumptions as to the Respondent’s knowledge of the name BIOBEAD.  On the basis that it is for the Complainant to make its case, it does not succeed on this point.

The Complainant also contends that, since the removal of the references to BIOBEAD on the websites at the Domain Names, the Respondent has no interest in continuing to use the Domain Names other than to “prevent the Complainant from registering it ”.  There is no evidence to support this assertion but, even if it were accurate, such conduct does not fall within one of the defined instances of Abusive Registration set out at Paragraph 3 of the Policy and it is not considered appropriate to expand the list in order to encompass what is known of the Respondent’s conduct in this case.  Furthermore, beyond the correspondence filed as evidence with the Complaint, there is no evidence to show how the Respondent used the name BIOBEAD,  if at all, on its websites.
  
Under paragraph 4 of the Policy, it is possible for the Respondent to show that the Domain Names are not Abusive Registrations by showing that it has “used or made demonstrable preparations to use the Domain Name[s] or…Domain Name[s] which [are] similar to the Domain Name[s] in connection with a genuine offering of goods or services”.  The Complainant acknowledges in its Complaint that the Respondent produces a “biological and mechanical pond filter which also uses buoyant beads to aid the filtration process”.  It states that Biobead Limited, its subsidiary, which seemingly uses and operates the BIOBEAD name and process, “has over 50 plants in operation or under construction with UK water utility companies”.  From these descriptions, it seems that the Complainant’s target market is that of large, corporate water utility companies whilst the Respondent sells into the consumer market.  It is possible, therefore, that the Respondent may have been engaged in the provision of a genuine offering of goods using the Domain Names to an entirely different market to the Complainant.  In the absence of a Response, however, no specific finding is made to this effect.

Paragraph 3a.i.C:  For the purpose of unfairly disrupting the business of the Complainant 
In the Complaint, it is stated that “by using the name BIOBEAD in the Domain Names the Respondents are taking unfair advantage of and are causing disruption and unfair detriment to the Complainant’s business”.   It must be noted,  that to establish an Abusive Registration on this basis, the Complainant must show that the Respondent registered the Domain Names primarily to disrupt the Complainant’s business, that is, that it had this intention at the time of registration.
There is no evidence provided to support this assertion.  Indeed, it seems more likely that the Domain Names were registered to promote the Respondent’s own BIOBEAD products.  
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 trademark BIOBEAD was used by the Respondent to promote identical goods and services to those which the Complainant produces.  The public could easily be confused by the Respondents of the Domain Names with regards the origin of the products…customers are lead to believe there is a connection between the Respondents  product and the product produced by the Complainant due to the Respondents  use of the Complainant’s Trademark BIOBEAD”.  Furthermore, the Complainant asserts that the “Respondent’s registration  will serve no purpose other than to confuse the public and divert potential customers from the Complainant’s products to those of the Respondent”.  

As set out above, the Complaint does not address the issue of whether the Complainant and the Respondent are competitors, that is whether they are providing similar or identical goods to the same, or a similar, target market.  From the contentions made by the Complainant as to Biobead Limited’s use of the BIOBEAD process and the Respondent’s production of mechanical pond filters, it appears that the markets into which the respective parties are selling or attempting to sell are dissimilar.  

No evidence is provided in support of the assertion that the Respondent is using the Domain Names in a way which has confused people or businesses into believing that the Domain Names are, in some way, connected to the Complainant.   However, it is of note that the Respondent removed references to the name BIOBEAD from the websites at the Domain Names approximately three months after being notified of the Complainant’s Rights and yet continued to use the Domain Names to sell their products.  Furthermore, the Respondent has at no stage tried to establish that it did have Rights in the name BIOBEAD, although it has had opportunities to do so, both in response to the Complaint and to the various letters sent to it by the Complainant’s representatives.

The question requiring determination, based on the limited information available, is this; is it likely that  customers of the Complainant have gone to the website hosted by the Respondent at the Domain Names and have been confused into believing that the Domain Names are “registered to, operated or authorised by, or otherwise connected with the Complainant”.  The Expert does not consider that the evidence is available to enable such a finding to be made. Although he has concluded that the Complainant has Rights in BIOBEAD,  there is no evidence produced to show  the extent of those rights.  The extent to which the BIOBEAD brand is known among potential or actual customers of the Complainant has a direct bearing on (1) the likelihood of those customers accessing the Respondent’s website and  (2) the likelihood of those customers being confused. Even in the absence of any Response from the Respondent challenging the Complainant’s assertions, there is simply too little evidence submitted by the Complainant to enable the Expert to accept, that, on a balance of probabilities, this ground for finding that the Domain Names are Abusive Registrations has been made out.

8.	Decision
The Expert does not find that the Complainant has been able, on the balance of probabilities, to satisfy the requirements of paragraph 3 of the Policy and, as a consequence, the Complainant’s request for transfer of the Domain Names is refused. 
Antony Gold