WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reef One Ltd. v. Eazytiger Ltd.
Case No. D2007-1914
1. The Parties
The Complainant is Reef One Ltd, of Norwich, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Eazytiger Ltd, of Leicester, United Kingdom of Great Britain and Northern Ireland, represented by Howes Percival LLP, of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain names <bi-orb.com>; <biorb.com>; bi-orb.net>; and <biorb.net> are registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2007. On December 27, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 27, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2008. On January 22, 2008, Respondent requested an extension to file a Response. On January 23, 2008, after receiving Complainant’s comments and objections on Respondent’s request for extension, the Center in the circumstances declined to extend the period for Response, and confirmed that the due date for submitting a Response remained January 30, 2008. On January 30, 2008, the Center received Respondent’s Response.
The Center appointed Clive Duncan Thorne, Roberto Bianchi and Gordon Harris as Panelists in this matter on February 22, 2008. The Panel finds that it was properly constituted. The Panel has submitted Statements of Acceptance and Declarations of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant Reef One Limited is an internationally known company which manufactures and sells a variety of home aquatics products. The Complainant’s aquariums and other aquatic products are sold worldwide in over 20 countries. The Complainant was established in 1999 and released their most renowned product “biOrb” in 2000. The “biOrb” name and logo have been used consistently ever since.
The Complainant owns numerous trademarks and domain names related to the trademark BIORB. The mark has been in constant use since 2000 and registration of the mark as a trademark was completed in March 2001. Exhibited at Annexes 4, 4a and 4b to the Complaint are copies of certificates of trademark registration as follows:
(i) Community trademark number 003686961 for the mark BIORB and logo;
(ii) US Registration number 2903709 for the mark BIORB;
(iii) United Kingdom Trademark Registration number 2314204 for the mark BIORB and a logo.
The Complainant has spent a substantial amount of money in establishing and advertising the BIORB mark and products and the general public has come to associate this mark with products of a high and uniformed quality.
The Complainant owns a number of domain names containing the BIORB mark, including <biorb.co.uk>, <biorb.fr>, <biorb.it>, <biorb.es>, <biorb.jp>, <biorb.tw>, <biorb.cn>, <biorb.hk>, <biorb.com.tr>, <biorb.co.za>, <biorbusa.com>, and <babybiorb.com>.
The Complainant points out that the Respondent did not register <biorb.com> until July 30, 2003 after the Complainant had legally registered the BIORB trademark and had been using the mark for over 3 years.
The websites accessed by the disputed domain names display the Respondent’s own website which contained Reef One Limited images and logos. These websites offer for sale Reef One Limited products, including the range of “biOrb” aquariums.
According to the Respondent, the Respondent has been at all material times a web design company. It has carried on the business of a web design company since 1999 and was incorporated in England as a private company limited by shares on February 7, 2002.
In early 2001 a client approached the Respondent with a view to setting up a website dedicated to the new “Big Brother” series on television. The client requested that the Respondent think of ways to bring back visitors to the site, and the Respondent was tasked not only with the development of the site, but also to create ideas for the site’s content. One of the ideas the Respondent had was for a “Big Fish Brother” whereby fish would be given different personalities based on their appearance and behaviour.
The Respondent approached the Complainant with this idea in or around April 2001 and asked if the Complainant would be interested in supplying the tank in exchange for a credit on the site. This was the beginning of the commercial relationship between the parties.
During their discussions, the Respondent suggested that the Complainant should consider an e-commerce store selling the “biOrb” product and indicated that the Respondent could supply that store in its capacity as a web designer. The Respondent was beginning to specialise in e-commerce sites. The Complainant responded that it would very much like to sell its products online. However, it was reluctant to pursue this route as it would conflict with its existing distribution chains.
In view of this, the Respondent asked the Complainant if it was possible that the Respondent could set up an online e-commerce store supplied directly by the Complainant but owned and operated by the Respondent. The Complainant was delighted to have an online store that would be willing to carry its entire product range as this satisfied both of the key reasons the Complainant had wanted to establish an e-commerce store.
The Respondent investigated domain name availability and noted that the domain name <biorb.com> was unavailable. The closest available alternative was <bi-orb.com>. Accordingly the Respondent telephoned the Complainant to see if it had any objection to the Respondent registering the domain name. The Complainant apparently indicated that it thought it was a “great idea” and accordingly the Respondent registered the domain name <bi-orb.com>. The website “www.bi-orb.com” went live on July 4, 2001.
Apparently delighted with the site and the Respondent’s dedication to providing a “great” customer experience, the Complainant congratulated the Respondent and gave it discounted rates across the range of products. The Respondent gained media exposure for the site. The Respondent was kept informed by the Complainant’s Managing Director, Mr. Stevenson, about product developments. Over the next few years the parties worked closely and a strong relationship developed between them. Subsequently, the Respondent became aware of other domain names related to the “biOrb” name and registered them accordingly. When the Respondent became aware that <biorb.com> was available, it contacted the Complainant and asked if it had any objection to the Respondent registering that domain name. The Complainant confirmed that it did not have any objection. Shortly after registration in 2003, the Respondent set up a second e-commerce store and promoted this.
A cordial commercial relationship apparently continued until February 2004, when, at a meeting with the Respondent, the Complainant raised concerns about the domain names and the potential confusion that might cause customers. The Complainant suggested that the domain names be transferred to it and then licensed back to the Respondent for at least the 10 year registration period at no cost. A draft license agreement to reflect this was drawn up by the Complainant’s solicitor and forwarded to the Respondent for approval. The parties were unable to agree the details of the license agreement which did not proceed.
The dispute between the parties came to a head when the Complainant’s solicitors, Mills and Reeve, wrote to the Respondent on June 1, 2005, referring to the registration of the domain names currently in dispute and stating that the Respondent did not have the trademark owner’s consent (i.e. the Complainant’s consent) to use these domain names. The letter also suggested that the Respondent was in breach of its domain name registration contracts. The letter suggested that the Respondent was using the Complainant’s trademark as a keyword for Internet searches and that it was reproducing the Complainant’s websites. The letter concluded by requesting undertakings to cease infringing the Complainant’s UK trade marks 2247061 and 2314204 and to cease immediately using the domain names in dispute.
5. Parties’ Contentions
The Complainant submits:
1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the domain names. It relies upon the following submissions:
i. The Respondent is not an authorized agent or licensee of the Complainant’s marks;
ii. The Complainant has never authorized the Respondent to use the trade mark BIORB in the domain name or in any other procedural matter;
iii. At no time has the Complainant entered into any agreement for the Respondent to be an authorized distributor of Reef One Limited products;
iv. The Respondent is directing Internet users to its commercial website together from the goodwill of the Complainant’s trade mark for their own commercial purposes;
v. The Respondent is making commercial gain from the domain names.
3. The domain names are registered and being used in bad faith:
i. The Respondent registered and is using the domain names with constructive notice of the Complainant’s trade mark rights;
ii. The domain names incorporating the BIORB trade mark were registered primarily for the purpose of disrupting the business of the Complainant;
iii. The Respondent has offered to sell the domain names to the Complainant at a value in excess of the Respondent’s out of pocket costs.
1. The Respondent accepts that the domain names in dispute are identical and are substantially similar to the Complainant’s trade marks.
2. The Respondent has rights or legitimate interests in respect of the domain names:
i. It is clear from the conduct of the parties that the Respondent has the Complainant’s express authority to use the disputed domain names;
ii. The Agreement between the parties and the subsequent relationship between the parties demonstrates “fair use”;
iii. The Complainant expressly approved the Respondent’s registration of the domain names;
3. The domain names registered are not being used in bad faith:
i. The registration use of the domain names was not in bad faith. The domain names were registered and used with the Complainant’s express authority;
ii. The domains were registered and used for the purpose of providing an eCommerce outlet for the Complainant’s products;
iii. The domain names were not registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name;
iv. The Respondent seeks a decision of reserve domain name hi-jacking on the grounds that the Complainant is acting in bad faith in bringing these proceedings.
6. Discussion and Findings
(A) Identical or confusingly similar
Given the Respondent’s concession on this element i.e. it is accepted that the domain names in dispute are identical/substantially similar to the Complainant’s trade marks, the Panel does not need to discuss this element further. It is accepted for the purpose of this decision that the domain names in dispute are identical and/or substantially similar to the Complainant’s trade marks.
(B) Rights or Legitimate Interests
In considering this element the Panel is conscious that there has been a long standing commercial relationship between the parties. It is undoubtedly the case that this commercial relationship has broken down. The issues arising from the breakdown of the relationship between the parties and the consequent differing interpretations as to what took place are not readily capable of determination by the Panel in the present proceedings.
The Complainant has the burden of proof in showing that the Respondent has no rights or legitimate interests in respect of the domain names and adduces evidence to support that submission. By contrast the Respondent adduces evidence to show that the Respondent has rights or legitimate interests in the domain names and relies upon evidence of the conduct of the parties set out at length in paragraph 5 of the Response to support this.
In considering this element, the Panel finds as follows:
i. The Respondent appears to have registered the disputed domain names with the Complainant’s consent or approval. The Respondent had been selling the Complainant’s products using the disputed domain names with the Complainant’s consent since 2001. The link to the Respondent as an on-line stockist as provided on the Complainant’s website is a link to “www.biorb.com” which then directs the customer to “www.wearfish.com”. The Panel accepts this is evidence that the Complainant knew about the Respondent’s use of the disputed domain names and also appeared to approve such use.
ii. The first occasion upon which the Complainant expressed any real desire to obtain the disputed domain names appears to be during 2005 when the Mills & Reeve letter referred to above was sent. Until that time it appears that the disputed domain names had been used with the Complainant’s full knowledge.
iii. The Panel given that it has limited evidence before it evidencing the breakdown of relations between the parties is entitled to take the view that there must have been consent or agreement from the Complainant to use the domain names up and until the time of the negotiations for a formal licence but that this was brought to an end as evidenced by the Mills & Reeve letter. In the Panel’s view the limited evidence adduced by the Complainant does not support the view that the Complainant has consistently maintained that the Respondent should return the disputed domain names. (Paragraph B2 of the Complaint).
iv. In the absence of detailed evidence to the contrary from the Complainant the Panel accepts the truth of the evidence referred to at paragraph 5 of the Response and in particular, the evidence set out at paragraphs 5H and 5N to the Response.
In particular, paragraph 5N of the Response states:
“(n) Subsequently the Respondent became aware of other domains related to the biOrb name and registered them accordingly. When the Respondent became aware that biorb.com was available it contacted the Complainant and asked if it had any objection to the Respondent registering that domain. The Complainant confirmed that it did not have any objection and in fact, welcomed the move. Shortly after registration in 2003 the Respondent set up a second eCommerce store and promoted this accordingly via the media, on-line marketing and search engine promotional campaigns”.
In the Panel’s view the Complainant has failed to satisfy its burden of proof with regard to this element.
This is sufficient to dispose of the Complainant.
C. The Domain Names were Registered and are being Used in Bad Faith
However, given the Respondent’s request that the Panel should consider whether or not the Complainant has been guilty of reverse domain name hi-jacking the Panel considers that it needs to deal with the issue of bad faith.
Given the Panel’s findings with regard to rights or legitimate interests the Panel does not find that the Respondent registered the domain names in bad faith. Registration was undertaken with the Complainant’s consent to registration and use of the domain names.
The Complainant submits that the Respondent offered to sell the domain names to the Complainant at a value in considerable excess of the Respondent’s out of pocket expenses. It relies in particular upon the emails exhibited at Annex 12 to the Complainant and the email exchanges of 4, to 7, December 2007. The email of December 6, 2007, from Mr. McCarthy of the Respondent: “I already have an offer on the table that far exceeds your figure”. Although on the face of it this may constitute evidence of an offer to sell the domain names to the Complainant at a value in excess of the Respondent’s out of pocket costs, the Panel is inclined to regard the email exchange as part of continuing commercial negotiations between the parties and not evidence of bad faith per se.
In the Panel’s view the Complainant has failed to show that the domain names in dispute were registered and used in bad faith.
D. Reverse Domain Name Hi-Jacking
The Panel has considered the merits of making a finding of reverse name hi-jacking. It has considered the submission as contained in the Response and in particular, that the Complainant has failed to provide adequate details of the Parties’ previous trading relationship and that the Complainant had given its consent to the registration and use of these domain names.
Given that the facts of the dispute appear to be substantially a commercial dispute between the parties, the Panel does not consider that it is justified in making a finding of reverse domain name hi-jacking.
For all the foregoing reasons the Complaint is denied. The Panel does not make a finding of reverse domain name hi-jacking.
Clive Duncan Thorne
Dated: March 7, 2008