WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brigade Electronics plc vs. Vision Techniques Ltd
Case No D2001-0740
1. The Parties
The Complainant is Brigade Electronics plc a company incorporated in England with its principal place of business at 62 Beresford Street, Woolwich, London SE18 6BG. The Complainants authorised representative is Dr Michael Spencer of Bromhead & Co, 37 Great James Street, London WC1N 3HB. The Respondent is Vision Techniques Ltd, a company incorporated in England whose address is at Suite 50 Glenfield Business Park, Blakewater Road, Blackburn BB1 5UH.
2. The Domain Name and Registrar
The domain name in dispute is <backeye.com>. The registrar for the domain name is Tucows.com Inc of 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center by email on June 4, 2001, and in hard copy on June 7, 2001. An acknowledgement of receipt of the Complaint was given by the Center on June 7, 2001. A request for Registrar verification was sent to the registrar on June 11, 2001, and confirmation given that the domain in dispute was registered with Tucows Inc and that the current registrant was the Respondent.
Notification of the Complaint and Commencement of the Administrative Proceedings was given to Vision Techniques at Suite 50 Glenfield Business Park, Blakewater Road, Blackburn, BB BB1 5QH which was the name of the domain name owner and its address given in the Registrar's verification as well as referred to in the Complaint and also to Vision Techniques Group plc at Phoenix House, Phoenix Park, Blakewater Road, Blackburn, Lancashire, BB1 5RW. It should be noted that the Complainant refers to the Respondent as Vision Techniques Limited at Suite 50 Glenfield Business Park, Blakewater Road, Blackburn BB BB1 5UH but also refers to Vision Techniques Group plc of Phoenix House, Phoenix Park, Blakewater Road, Blackburn, Lancashire, BB1 5RW as the Respondent at Section B of the Complaint. Given that the Center has sent notification of the Complaint and commencement of the Arbitration proceedings to Vision Techniques at the Suite 50 Glenfield Business Park address and also to Vision Techniques Group plc at the Phoenix House address the Panel is satisfied that the Respondent, Vision Techniques Ltd, has notice of the Complaint. In this regard the Panel has seen evidence of fax, email and courier communication of the Complaint to the Respondent.
No response was received from the Respondent. Notification of the Respondent's default was served upon the Respondent on July 9, 2001. No further response was received from the Respondent and on July 25, 2001, notification of appointment of the administrative panel was given consisting of sole panelist Mr Clive Duncan Thorne. The scheduled date for the decision was August 8, 2001.
The Panel reviewed the Complaint but taking into account that the Respondent was in default felt that it was incumbent upon the Complainant to prove its case. It felt on the evidence put before it in the Complaint that the Panel was not in a position to reach a decision. Accordingly the Panel on August 8, 2001, issued an Administrative Panel Procedural Order number 1 in the following terms: -
"1. that the Complainant, within 14 days, be at liberty to file with the Center statements evidencing: -
(a) That the Respondent is a competitor of the Complainant producing the Reverse Alarm.
(b) That the Reverse Alarm System competes with the Complainants Reversing System.
(c) The domain name in dispute <backeye.com> points directly to the Respondent's website where their competing product is advertised.
(d) The domain name was registered primarily for the purposes of disrupting the business of the Complainant and to intentionally attract financial gain and to divert customers.
(e) The domain name was registered in order to prevent the Complainant from reflecting its trademark.
2. The Respondent be served by the Center with copies of such statements as are filed by the Complainant pursuant to this Order and that the Respondent be at liberty within 14 days thereafter to make submissions to the Panel confined to the matters contained in such statements."
The Panel understands the present position to be as follows. On August 21, 2001, the Complainant's representative communicated with the Center addressing the points raised in the Procedural Order number 1. This was followed on August 24, 2001, by a supplemental filing by the Complainant including annexes. The Panel understands that the supplemental filing was communicated to the Respondent by the Center and that no response was received from the Respondent within the time limit set out in the Procedural Order. Accordingly the Panel now decides the case on the basis of the original Complaint submitted by the Complainant and the further supplemental filing from the Complainant.
In its Complaint the Complainant, Brigade Electronics plc, submits that it is the owner of a number of registered trademarks including the following.
1. A series of two UK registrations "BACKEYE" and "BACK-EYE" in class 9 number 1584254.
2. A European Community trademark registration number 00057083 "BACKEYE" in class 9.
Copies of the certificates of registration are annexed to the Complaint. The Panel is satisfied that the Complainant is the owner of these trademark registrations.
No further evidence with regard to the activities of the Complainant is set out in the original Complaint beyond the fact that the trademark "relates to reversing alarms and reversing vision systems sold by Brigade Electronics plc."
In its supplemental filing the Complainant produces further evidence as follows:
1. Annex 1 to the supplemental filing is an extract from the Complainant's website, which refers to the Complainant's activities as an expert in reversing safety systems. Reversing safety is referred to on the website as "reversing in a safer way through the fitment of reverse warning systems. These systems can be anything from the original reversing bleeper to the sophisticated CCTV reversing systems known as Backeye®" the website also refers to the Complainant as a market leader.
2. Annex 2 to the supplemental filing is an extract from a website apparently maintained by Vision Techniques (Group) plc referring to Vision Techniques (Group) plc as "the UK leaders and one of the world's premier suppliers of mobile CCTV and vehicle reversing safety aids".
3. More information with regard to the Complainant's product is set out at Annexes 3 and 4 to the supplemental filing. In particular Annex 4 illustrates examples of a number of units apparently sold by the Complainant under the mark "Backeye".
4. Annex 5 to the supplement filing is an extract from the Respondent's website and shows an example of the Respondent's BT-68 EMIR colour rear vision system. There is no reference to the use of the mark or domain name "Backeye" in Annex 5.
The Complainant in its supplemental filing has also drawn the Panel's attention to a demand letter sent to Vision Techniques at Suite 50 Glenfield Business Park, Blakewater Road, Blackburn by the Complainant's representative on January 11, 2001. It refers to the Complainant's two trademark registrations referred to above and to the domain name <backeye.com> and requests that Vision Techniques will "confirm that you will be releasing the above web address to our clients forthwith." There is no evidence submitted by the Complainants representative either in the Complaint or in the supplemental filing as to any response to that letter or indeed whether there was any follow up by the Complainant.
4. Parties Contentions and Discussions
In order to succeed in its request for an Order that the domain name <backeye.com> be transferred to the Complainant the Complainant has to prove that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present.
These are as follows: -
(i) The Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
(iii) The Respondent's domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these elements in turn.
(i) The Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
Having seen copies of the Complainant's trademark registrations for the mark "BACKEYE" the Panel is satisfied that the Complainant has trademark rights for the mark "BACKEYE". It follows that the domain name <backeye.com> is identical or confusingly similar to the Complainant's marks. For these reasons the Panel finds the Complainant has succeeded in proving paragraph 4(a)(i) of the policy.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name
The Complainant makes no submissions on this element within the original Complaint nor does it do so in the supplemental filing. Given the absence of a Response and bearing in mind that the burden of proof is upon the Complainant the Panel, in these circumstances, can only consider this element from the evidence before it. In the Panel's view there is no evidence before it showing that the Respondent has any right or legitimate interest in respect of the domain name.
The only evidence of the activities of the Respondent is a reference to a telephone call to the Respondent's head office, the details of which as set out in the Complaint are very sketchy and Annex 5 to the Complainants supplemental filing, which is the extract from the Vision Techniques website where there is no mention of Backeye. There is therefore no evidence before the Panel that the Respondent has any rights or legitimate interest in respect of the domain name. The Panel is prepared to accept that the Respondent has no rights or legitimate interest in respect of the domain name.
(iii) The Respondent's domain name has been registered and is being used in bad faith.
The Complainant's submissions are as follows:
(a) The Respondent is a competitor to the Complainant producing reverse alarm systems, which compete with that of the Complainant's reversing vision system.
(b) The domain name <backeye.com> points directly to the Respondent's website where their competing product is advertised.
(c) The domain name was registered primarily for the purpose of disrupting the business of the Complainant and to intentionally attempt to attract financial gain and divert customers.
The Panel, as a result of the evidence submitted with the supplemental filing from the Complainant is prepared to accept that the Complainant and the Respondent are in competition in that their two product systems compete.
The Panel also accepts, in the absence of any evidence to the contrary, the submission that the link <backeye.com> leads directly to the Respondent's website where its products are advertised.
The Panel does not, however, consider that there is any direct evidence that the domain name was registered "primarily for the purpose of disrupting the business of the Complainant". However, having accepted the Complainant's submissions that they have trademark rights in the name "Backeye" for their reverse safety product and that the Respondent will therefore have constructive notice of these rights, there would appear to be no justification for the use of the domain name by the Respondent save to obtain commercial advantage. The Respondent has had a number of opportunities to justify its use of the domain name but has failed to do so, choosing not to respond to the Complaint nor to the procedural Order. The Panel is also conscious that there is no response to the January 11, 2001, letter before it and assumes, in the absence of any evidence from the Respondent, that the Respondent chose not to reply to that letter.
Even though the details of the telephone conversation with the Respondent's head office referred to in the Complaint are somewhat sketchy, the telephone call is nevertheless evidence that when the name "Backeye" was referred to in the context of reverse vision systems the Respondent suggested that their system was purchased instead.
In all the circumstances, taking into account particularly the absence of a Response, the Panel is prepared to find for the Complainant in respect of this element.
It follows that the Complainant has succeeded in all three limbs of paragraph 4(a) of the Policy and succeeds in its complaint.
5. Decision and Findings
The Complainant requests that the domain name <backeye.com> registered by the Respondent, Vision Techniques Ltd, be transferred to the Complainant, Brigade Electronics plc. The Panel finds for the Complainant and orders that the domain name <backeye.com> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: September 28, 2001