WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

UVO3 Ltd v. KK Balers Ltd

Case No. D2008-0520

 

1. The Parties

The Complainant is UVO3 Ltd. of Cambridgeshire, United Kingdom of Great Britain and Northern Ireland, represented by SEQ Legal LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is KK Balers Ltd, of Addlestone, Surrey, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name, <uvo3.com> (the “Domain Name”), is registered with Tucows (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2008. On April 4, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar 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 April 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2008. The Response was filed with the Center on April 30, 2008.

The Center appointed Tony Willoughby as the sole panelist in this matter on May 7, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Whether directly or indirectly through sister companies, both parties are engaged in the field of (inter alia) UV disinfection and UV consumables.

The Respondent was incorporated on February 2, 1993. The Complainant was incorporated on March 6, 2003.

The prime mover behind the Complainant is a Mr. Wadsworth, who was employed by a sister company of the Respondent from July 1998 to July 2002.

On March 31, 2003, solicitors representing the Respondent wrote to Mr. Wadsworth alleging that Mr. Wadsworth was acting in breach of his contract of employment with the Respondent’s sister company and had made unlawful use of that company’s confidential information. On April 14, 2003, Mr. Wadsworth’s solicitors responded denying the allegations. There the correspondence ended.

The Respondent registered the Domain Name on February 2, 2004, and connected it to its sister company.

On February 23, 2004, the Complainant applied to register as a trade mark in the United Kingdom a device mark, the most prominent element of which is the letters and numeral combination, “UVO3”. The registration came through on November 5, 2004, under number 2356578. It is in class 35 for services relating to water treatment.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its UVO3 trade mark, a mark in which it claims both registered and unregistered rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant recites the examples of what may constitute rights or legitimate interests for this purpose in paragraph 4(c) of the Policy and contends that none of them is applicable. The Complainant contends that the Respondent registered the Domain Name knowing of the Complainant’s rights to the UVO3 mark and with the intention of diverting the Internet users to the Respondent’s site. The Complainant contends that the Respondent linked the Domain Name to the water purification site of its sister company.

The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant reiterates what is said above and produces evidence to show that the Respondent has in the past registered the name of another competitor in the field as domain names and sold those names to the competitor at a profit. The Complainant contends that all four examples of bad faith registration and use set out in paragraph 4(b) of the Policy are applicable.

B. Respondent

The Response is filed by the managing Director of the group of companies of which the Respondent is a part. It is relatively short. The substance of it is as follows:

“KK Water Purification Ltd. is a registered Limited company and has been a leading distributor of UV products within the UK since 1990. We are the sole agent for Aquafine and have over 18 years experience in our field.

Mr. Wadsworth, a former employee of KK Water Purification Ltd., left the company in 2002 and directly set up as competition taking with him a number of KK Water Purification customers. He offered our UV products which included Aquafine and Van Remmen. Not long after he was appointed UK Distributor of Van Remmen. Whilst in our employment Mr. Wadsworth spent his last year marketing, establishing and exhibiting Van Remmen products utilising our finance.

“At the time of presenting his notice to KK Water he claimed not to be entering the field of UV as a competitor, but that he would be working with his father in a family hotel and wine business.

“We understand that the complaint is due to KK Water Purification owning the domain name UV03.com but this was purchased in good faith and without the complainant in mind as it is relevant to our industry. We were also unaware that the registration of the domain name would disrupt the business. We purchased the name because we felt it directly related to the many kinds of ‘water purification equipment’ we carry for clients as our Limited Company name suggests. The goal of sanitation is to prevent the spread of diseases and pathogens between users, and UVO3 is a term which appears in the detailed explanations of the process.

“If the complainant did not realise that this had happened for almost four years then it is felt that it cannot have had a negative impact on his business.

“KK Water have not taken this action for commercial gain, or to cause any confusion but as the complainant set up in direct competition in the first instance, we do not feel that our actions can be contested. KK Water employed Mr. Wadsworth in good faith and we were not informed of his intentions before he left.

“Aside from this, our legal insurers have told us that although Mr. Wadsworth may have now registered it as a trade mark in the UK, we own UVO3.com as an international sales organisation. Unless Mr. Wadsworth has internationally registered the trade mark he has no legal right to the name.

“However, in conclusion, we would consider selling the domain name to Mr. Wadsworth for a realistic figure.”

 

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) The Domain Name is 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 interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name, which features “uvo3” and the generic domain suffix is in substance identical to the Complainant’s name and the most prominent element of its registered trade mark.

The Complainant claims that its turnover over the last 5 years has totalled just under 1 million for the period. The Respondent does not challenge these figures. This is not the turnover of a large business, but it is not insignificant and the Panel is ready to accept in principle that the Complainant has unregistered rights in the name in addition to its registered rights.

The Respondent appears to argue that the term “uvo3” is a generic term in use in the industry in which the parties operate, but produces no evidence of any kind to support the claim.

The Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The departure from the employment of the Respondent’s sister company of

Mr. Wadsworth, the prime mover behind the Complainant, and his subsequent setting up of the Complainant in competition with the Respondent clearly upset the Respondent.

The allegations set out in the Respondent’s solicitor’s letter of March 31, 2003 (see section 4 above) are serious allegations, but they were not followed up. The Response makes further allegations against Mr. Wadsworth, but there is nothing in the way of evidence before the Panel to support those allegations.

The Panel is satisfied that at the time when the Respondent registered the Domain Name the Respondent was fully aware of the Complainant and the name and mark under which it was trading. Indeed, the Respondent accepts this to be the case.

The Complainant contends that it is plain that the Respondent’s motivation behind registration of the Domain Name was either to exploit to its own commercial advantage the Complainant’s rights to its name and trade mark or to disrupt the Complainant’s business.

On the evidence before the Panel that seems to the Panel to be a reasonable proposition. Certainly, it is sufficient to constitute a prima facie case, which it is for the Respondent to answer.

In answer the Respondent contends that it registered the Domain Name in good faith and for a legitimate commercial purpose, namely to trade in the water purification field, a field in which “uvo3” is a generic term. It contends that it had no bad faith intentions in respect of the Complainant.

However, the Respondent has produced no evidence of any kind to support its claims.

In these circumstances, the Panel has no alternative but to hold that the Complainant’s prima facie case under this head has not been answered. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

In light of the above findings that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name, it may be thought that it is but a short step to conclude that the Domain Name was registered in bad faith.

However, one factor, which the Panel needs to address, is the status of the Complainant’s rights in respect of its name and trade mark as at the date of registration of the Domain Name. If those rights were not in existence at that time, it is much more difficult for the Complainant to establish that the Respondent registered the Domain Name with a bad faith intent directed at the Complainant and its rights.

As at February 2, 2004, the Complainant had no registered rights. The Complainant’s trade mark application followed later that year.

As at February 2004, the Complainant’s turnover from date of incorporation was somewhere just under 200,000 on the unchallenged evidence of the Complainant. While small, the Panel is satisfied that at that date it constituted a substantial (in the sense of not insubstantial) business and one, which was destined to grow. The Respondent’s aggressive attitude taken towards Mr. Wadsworth in March 2003 makes it clear that the Respondent saw the Complainant as a serious competitive threat.

The Panel is satisfied that the Complainant had unregistered trade mark rights in respect of its name as at the date of registration of the Domain Name. If the Respondent is correct in its unsupported assertion that “uvo3” is a generic term in the industry, it may be that the Complainant’s rights are very limited, but in any event that is something upon which the Panel has no evidence.

There is another factor, which the Panel has to address. The Complainant has produced evidence supported by an independent statement that in or before March 2005 the Respondent registered the name of Van Remmen as a domain name in both the “.com” and “.co.uk” domains, Van Remmen being another competitor in the field for which the Complainant is a distributor. These registrations were made without Van Remmen’s permission. Van Remmen recovered the names on paying the Respondent 700 Euros.

The Response makes no mention of this affair, which is clearly set out in the Complaint. In the absence of an answer from the Respondent on this point, the Panel concludes, as asserted by the Complainant, that the Respondent uses the registration of third parties’ trade marks as domain names, when it suits its purpose to do so.

It is not in dispute that when the Respondent registered the Domain Name, it did so knowing of the Complainant’s use of and interest in the name; moreover, it is not in dispute that at that time the Respondent was ill-disposed towards the Complainant and felt very bitter about what it perceived to be the dishonourable behaviour of Mr. Wadsworth.

The Panel rejects the Respondent’s reason for having registered the Domain Name and finds that it registered it for no bona fide purpose. It could have been with a view to selling the Domain Name to the Complainant at a profit as it did with the Van Remmen domain names and as suggested by the last paragraph of the Response (see section 5 above), it could have been with a view to blocking the Complainant and/or disrupting the Complainant’s business or it could have been with a view to diverting internet traffic from the Complainant to the Respondent. The Respondent does not deny that at one time the Domain Name directed internet users to the Respondent’s sister company’s website.

Whatever the Respondent’s intentions, the Panel is satisfied that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) and one or more of the sub-paragraphs of paragraph 4(b) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <uvo3.com>, be transferred to the Complainant.


Tony Willoughby
Sole Panelist

Dated: May 21, 2008