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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pharma Medico UK Limited v. Pharma Vita, Nigel Fawkes

Case No. D2008-0240

 

1. The Parties

1.1 The Complainant is Pharma Medico UK Limited, of United Kingdom of Great Britain and Northern Ireland, represented by Lett Law Firm, Denmark.

1.2 The Respondent is Pharma Vita, Nigel Fawkes, of United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

2.1 The disputed domain names are:

<nourella.com>

<nourella.info>

<nourella.net>

<nourkrin.info>

<nourkrin.net>

<slendernight.com>

(together the “Domain Names”) and are all registered with Tucows Inc (the “Registrar”).

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2008. On February 18, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 19, 2008, 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.

3.2 In response to a notification by the Center that the Complainant had failed to identify the correct Registrar and that the Complaint had not addressed the element of bad faith required by paragraph 3(b)(ix)(iii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Complainant filed an amendment to the Complaint on February 29, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

3.3 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 March 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2008.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 3, 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

4.1 The Complainant was established on December 22, 1999 and is a privately owned company incorporated in the United Kingdom. The business of the Complainant is the application of the results of dermatological and biochemical research and patents into products. These include the “Nourella”, “Nourkrin” and “Slendernight” product ranges.

4.2 The Complainant has registered various trade marks that incorporate the Nourella and Nourkrin names. These include:

(i) Community Trade mark No. 004382669 filed on April 12, 2005 for the word “Nourella” in class marks 3, for “Creams, lotions, cosmetics”; 5, “Pharmaceutical preparations”; and 44 “Medical services”.

(ii) Community Trade mark No. 004382677 filed on April 12, 2005 for the word “Nourkrin” in class marks 3, for “Creams, lotions, cosmetics”; 5, “Pharmaceutical preparations”; and 44 “Medical services”.

(iii) UK Trade mark No. 2018209 filed on April 26, 1995 for the word “Nourkrin” in classes 3, “Cleaning preparations”; and 5, “Dietetic foodstuffs and supplements”.

The Complainant does not own a registered trade mark in the term “Slendernight”.

4.3 The Domain Names were all registered by Pharma Vita on August 19, 2002.

4.4 Pharma Vita was at the time of the registration of the Domain Names, a fully owned subsidiary of the Complainant and undertook the sales of the Complainant’s produces in the United Kingdom. It registered the Domain Names on the Complainant’s instructions.

4.5 The Complainant subsequently decided to move from a structure where sales were through subsidiaries to one where sales were made though distributors. Accordingly, in November 2002 the Respondent was sold to Life’s2Good (UK) Limited (“Life’s2Good”), which was also appointed as the Complainant’s exclusive distributor in the United Kingdom and Ireland. It would appear that although thereafter it was Life’s2Good that used and controlled the Domain Names, the Domain Names remained in the name of the Pharma Vita.

4.6 Pharma Vita was dissolved on June 27, 2006. At some point prior to the commencement of these proceedings (although when is not clear) the distribution arrangement, between the Complainant and Life’s2Good came to an end.

4.7 No evidence is before the Panel as to how the Domain Names have been used from time to time although it would appear that at around the date of the Complaint, the domain names resolved to Life’s2Good’s website.

4.8 On or about the date when the proceedings were forwarded to the Panel and at the date of this decision the position appears to have been or is as follows:

(i) the domain names <nourella.com>, <nourella.info>, <nourella.net>, and <slendernight.com> resolve or resolved to a homepage prominently displaying the heading “lifes2good” and with links to separate websites operated by Life’s2Good in relation to different territories. Those websites offer various goods and services, but as far as the Panel can tell, none of the Complainant’s Nourella or Slendernight products;

(ii) the domain names <nourkrin.info> and <nourkrin.net> resolve or resolved to domain name parking pages operated by 123-reg.co.uk. For the most part the pages displayed take or took the form of advertisements for 123-reg.co.uk’s service, but below that are a series of “related links” to “Nourkrin”, “Homes for Sale”, “Apartments”, “Dating Services”, “Chat Rooms”, “Airline Tickets”, “Travel Guides”, “Las Vegas”, “Hawaii”, and “Used Cars”.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

5.1 The Complainant contends that the Domain Names consist of the Complainant’s trade marks in the words NOURKRIN, NOURELLA and SLENDERNIGHT.

5.2 In addition to the registered trade marks already described, the Complainant submits that it has acquired exclusive rights to the trade mark SLENDERNIGHT through its marketing and selling of a product branded with this name. In support of this the Complainant has provided a printed copy of a marketing leaflet produced by the Complainant, which describes the product. The Complainant has also provided screenshots of pages of a website in English, operating from the domain name <pharmamedico.dk>, in which “Slender Night” is advertised. It, therefore, contends that, although the Complainant does not hold a registered trade mark for SLENDERNIGHT, the name constitutes an unregistered trade mark in which the Complainant holds rights for the purposes of the Policy.

5.3 The Complainant claims that the Domain Names are identical to its registered and unregistered trade marks previously described and that the rights in these trade marks “belong solely to the Complainant”.

No rights or Legitimate Interests

5.4 The Complainant contends that “there are no facts or evidence whatsoever indicating that the Respondent has any rights or legitimate interests with regard to the disputed domain names”.

5.5 The Complainant states that “By fault no one did at [the time when the shares of Pharma Vita were transferred to Life’s2Good] consider transferring the domains to its rightful owner before completion of the share purchase, since the appointed distributor [presumably Life’s2Good] made approved use of the domains”. Therefore, whilst this is not entirely clear, the Complainant appears to contend that from this date neither Pharma Vita nor Lifes2good had a right or legitimate interest in the Domain Names.

5.6 Further, the Complainant contends that as at the date of the Complaint, “the domain names all point to the former distributor’s website, which means that the present use of the domain names is very abusive to the [current] distributor”. It claims that the “new distributor at no time has had the right to any of the trade marks or domain name”. Therefore, the Complainant’s position seems to be (although again this is not entirely clear) that even if its primary contention as to no right or legitimate interest is incorrect, then there cannot be such a right or interest since the distribution agreement came to an end.

Bad Faith

5.7 The Complainant alleges that the Respondent has used the Domain Names in bad faith. In particular, bad faith is said to be demonstrated by the following:

(i) the fact that the Respondent has not responded to the Complainant’s “numerous” attempts to make contact in order to resolve this matter. However, no further explanation or evidence is provided in this respect.

(ii) the fact that the use by the Respondent of the Domain Names contravenes the terms of an agreement between the Complainant and Life’s2Good (UK) Limited.

The Complainant points in this respect to an extract from a distribution agreement between the Complainant and a company called Irish Response Ltd. Articles 7(2) and 7(5) of the Agreement state:

“(2) The Distributor shall at no time under this Agreement acquire any Intellectual property rights. …

(5) The supplier shall at no time under this Agreement acquire any rights in relation to trademarks, logos, brandnames or Intellectual Property which are the property of the Distributor.”

From this the Complainant claims that “Irish Response Ltd./Lifes2good, Irish Response¹ is … under an obligation to ensure that the disputed domain names remain the property and not least rights of the Distributor”

(iii) the Respondent is said to have used the Domain Names to attract Internet users for commercial gain.

B. Respondent

5.8 The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

6.2 The Panel does not find that there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely 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 (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

A. Identical or Confusingly Similar

6.5 The Panel accepts that the Complainant is the proprietor of rights in registered trade marks for the names “Nourella” and “Nourkrin”. Given that the Domain Names <nourella.com>, <nourella.info>, <nourella.net>, <nourkrin.info>, and <nourkrin.net> can only sensibly be understood as the names “Nourella” or “Nourkrin” with the addition of the suffixes “.com”; “.net”; and “.info”, the Panel has no difficulty in finding that these domain names can for the purposes of the Policy be considered identical to trade marks in which the Complainant has rights.

6.6 In the case of <slendernight.com>, the Complainant instead claims unregistered rights in the term “Slendernight”. It is undoubtedly the case that an unregistered trade mark can be a trade mark for the purposes of paragraph 4(a)(i) of the Policy. It is, however, also clear that it is not possible to claim a worldwide unregistered trade mark right. What a complainant must do is show that it holds rights that amount to unregistered trade mark rights in a particular jurisdiction or jurisdiction. As this panel stated in Antonio de Felipe v Registerfly.com, WIPO Case No. D2005-0969, (a case which involved a claim of unregistered trade mark rights in a personal name):

“Unregistered trade mark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country. A personal name is capable of qualifying as an unregistered trade mark recognised by the Policy, but in determining whether it does in a particular case a panel will look to the jurisdictions in which those rights are claimed. The panel will then determine whether the complainant can show that the name provides an unregistered right in at least one of these jurisdictions.”

6.7 In this case the first problem is that the Complainant does not identify the jurisdiction in which it claims unregistered rights. However, since it would appear that the Domain Names were registered with use in the United Kingdom and/or Ireland in mind it is perhaps reasonable to assume that the Complainant relies on unregistered rights under the law of passing off in these countries.

6.8 Even if this is assumed in the Complainant’s favour, the next problem is the paucity of evidence to support such claims. In particular:

(i) Any claim for rights under the law of passing off requires a complainant to show that it has by reason of its activities in these territories developed goodwill in the relevant name. There is no evidence or description of the level of sales or advertising of “Slendernight” products in the United Kingdom or Ireland at any time.

(ii) The Complainant does not expressly contend that it is currently selling “Slendernight” products in the United Kingdom or Ireland.

(iii) Whilst it may not be unreasonable to assume that at least some degree of sales resulted from the Complainant’s historical appointment of Life’s2Good as its distributor in the United Kingdom, it is unclear (a) why it is that the Complainant (as opposed to Life’s2Good) should be considered the owner of that goodwill²; and (b) to what extent that goodwill, if any, has dissipated since Life’s2Good’s distribution agreement came to an end.

(iv) The Complaint appends a copy of a leaflet for the “Slendernight”³ product but when this was produced and the extent to which this has been recently distributed in the United Kingdom or Ireland is not clear. Indeed, the leaflet carries with it the number 11.99 which if anything suggests it was produced in November 1999. Further, it carries the statement “Produced in Canada for Pharmavita Ltd”. Pharma Vita is of course the name of the Respondent and from the Complainant’s own case it would appear that Pharma Vita has not engaged in trading activity since November 2002.

(v) The Complaint also appends what appears to be a copy of a page from a website operated by “Pharma Medico International” as at November 11, 2007. That website page is in English and “Slender Night” is one of the products advertised on that page. However, other than the use of the English language there is nothing else to suggest that the product is sold in the United Kingdom. The domain name from which the website operates uses a Danish ccTLD, and contact details for the operators of the website takes the form of a Danish address and Danish telephone number.

6.9 In a number of previous cases, this Panel has been prepared to accept on very limited evidence that a Complainant has sufficient goodwill in a name in the United Kingdom for it to have trade mark rights for the purposes of the Policy (see, for example, the Antonio de Felipe case identified above). In doing the Panel has borne in mind the fact that paragraph 4(a)(i) of the Policy has been said by panelists on a number of occasions to provide a low threshold test. However, the Complainant must place something of substance before the panel upon which a finding of unregistered trade mark rights can be grounded. This Complainant has failed to do in this case.

6.10 It might be said that the Complainant would be able to remedy this if allowed to submit further evidence on this issue, and that the Panel should exercise its powers under Paragraph 12 of the Rules so as to give the Complainant the opportunity to do so. However, first, the obligation is on a complainant to prove its case and the panel is not required to assist a complainant in rectifying a defective complaint. Second, as will become apparent later in this decision, an order under paragraph 10 and 12 of the Rules would serve little purpose since there are more fundamental difficulties with the Complainant’s case.

6.11 In summary, the Panel accepts that the Complainant has satisfied paragraph 4(a)(i) of the Policy so far as the domain names <nourella.com>, <nourella.info>, <nourella.net>, <nourkrin.info> are concerned. The Complainant has failed to satisfy the requirements of Paragraph 4(a)(i) of the Policy so far as the <slendernight.com> domain name is concerned.

B. Rights or Legitimate Interests

6.12 The Complainant’s case on the question of legitimate interests (and indeed bad faith) whilst expressed at times in a somewhat confusing and confused manner nevertheless appears to be relatively simple. It asserts and accepts that the Domain Names were initially registered with its authority. However, it seems to believe that as a consequence of the licensing agreements that were in place in relation to those marks that since the initial sale of Pharma Vita to Life’s2Good, or failing that the ending of Life’s2Good’s distribution agreement, that any legitimate interest that these companies may have had no longer remains.

6.13 There are real difficulties with a case that has been put in these terms. First, even when taken at face value the Complainant’s case is not entirely convincing. There is very little before the Panel to support the Complainant’s contention that it is the lawful owner of the Domain Names. The only document that is put forward to support that contention is an extract from the distribution agreement with Life’s2Good. However, as far as this Panel can tell this says nothing about ownership of the Domain Names, only who is the owner of the Intellectual Property Rights (which is either an undefined term in this agreement or the Complainant has failed to provide the definition).

6.14 The Complainant also maintains that its contentions here are supported by the fact that the liquidators did not transfer the Domain Names to Life’s2Good. However, the Panel does not believe that any sensible inference of the Complainant’s ownership or entitlement can be inferred from this fact.

6.15 Second, and even more fundamentally, even if the Complainant does have some sort of proprietary claim in, or contractual claim to the transfer of the Domain Names, this is not the sort of claim that sits happily within the scope of the Policy. The Policy was not designed to deal with or provide a remedy to contractual and proprietary disputes. It instead provides remedies in relation to trade mark owners in respect of certain types of unauthorized use of domain names.

6.16 Can then the Complainant succeed in showing no right or legitimate interest under a more conventional application of the Policy? There is a problem that arises here in that the Complainant does not provide any evidence of how it is that the Domain Names have been, and are currently being, used. This is far from helpful. There is an assertion that the Domain Names “all point to the former distributor’s website” but no explanation or description of what form that website takes.

6.17 The Complainant suspects that once again this deficiency in the Complaint could be remedied. The Panel has already described earlier on in this decision how the Domain Names are currently being used and the Panel suspect that it is this sort of use about which the Complainant complains. If this is so, it seems likely that the Complainant could indeed put forward a case to the effect that the entity that seems currently to have de facto control over the Domain Names (i.e. to Life’s2Good) has no right or legitimate interest in the Domain Names. It would appear that Life’s2Good has used the Domain Names to draw Internet users to a website that does not sell the products to which the Domain Names refer. It is clear that such use does not provide a right or legitimate interest under the Policy.

6.18 In the circumstances, if this was the only problem with the Complaint, then the Panel may have been minded to make a procedural order under paragraphs 10 and 12 of the Rules giving the parties the opportunity to comment further on these issues and in the absence of further substantive submissions on the point to then decide this aspect of the Complainant’s case in the Complainant’s favour. However, given the Panel’s conclusions as to bad faith below this is not necessary.

C. Registered and Used in Bad Faith

6.19 In the papers filed by the Complainant, there is reference to the Domain Names being used in bad faith. However, what the Complainant fails to address to any real degree is the requirement not only that the Domain Names be used in bad faith but that they be registered in bad faith.

6.20 Leaving aside for one moment the difficulties that arise from the involvement of Life’s2Good in this case, it seems quite clear that the original registrations by Pharma Vita were not in bad faith. Indeed, how could they have been given that the Complainant itself, has confirmed that Pharma Vita acted upon the instructions of the Complainant in registering the Domain Names.

6.21 The Panel does not quite think that this is quite the end of the matter. There is the fact that since November 2002 the Domain Names notwithstanding the registration have been de facto controlled by Life’s2Good. Could it therefore be said that, as of November 2002 the registrant of the Domain Names were in fact registered by Life’s2Good and that this constitutes a fresh registration for the purposes of assessment of bad faith? The Panel thinks not. The fact that a parent company de facto controls the domain names of its subsidiaries does not mean that it, rather than its subsidiaries, is the registrant of that domain name. Further, even if the Life’s2Good was the registrant it is does not necessarily follow that this registration was in bad faith. For reasons that have already been set out under the heading of rights and legitimate interests above, the Panel is far from convinced that Life’s2Good was not entitled to register the Domain Names at this stage. The Panel has seen no documents that suggest the Life’s2Good as the Complainant’s then authorised distributor could not have done so.

6.22 However, this still leaves the fact that in June 2006 Pharma Vita ceased to exist. At this point it seems that the true owner of the Domain Names must have changed. One possibility here is that the Domain Names passed to Life’s2Good and the liquidator simply failed to complete the necessary formal transfer. Another possibility, particularly if Pharma Vita was a UK registered company⁴ is that the Domain Names, became “bona vacantia” and ownership in them passed by operation of English law to the Crown.

6.23 It, therefore, seems that a respectable argument may exist that in June 2006, there was a fresh registration and that the question of bad faith registration can be addressed anew from that date. The problem is that this is not an argument that is put forward by the Complainant in this case. Even if this argument is a good one (and the Panel expresses no opinion on the matter) then it raises as many questions as it answers. For example, if the Domain Names passed by operation of law to the Crown, could this really be sensibly characterised as a bad faith registration⁵? Further, even if the Domain Names passed to Life’s2Good there is insufficient material in the Complaint from which the Panel can assess the question of bad faith at this date. No evidence is brought forward as to how exactly the Domain Names were being used by Life’s2Good and whether or not Life’s2Good’s distribution agreement remained in existence at this date.

6.24 In the circumstances, the Complainant has failed to show that the Domain Names were registered in bad faith and the Complaint must fail.

6.25 This is not a conclusion that the Panel reaches with any great satisfaction. It would appear that there is a good chance (leaving aside for the moment the fact that the Complainant has brought no substantive evidence before the Panel as to how the Domain Names are being used) that there has been bad faith use by Life’s2Good in this case. Indeed, the fact that a domain name whilst not originally registered in bad faith could subsequently be used in bad faith is something that has led the drafters of other ADR policies to decide that it is sufficient for a complainant to show bad faith registration or bad faith use⁶.

6.26 Nevertheless, given the requirements of the Policy as it currently stands, the Panel has no alternative but to find against the Complainant on the basis of Paragraph 4(a)(iii) of the Policy.

 

7. Decision

7.1 For all the foregoing reasons the Panel denies the Complainant’s request that the Domain Names be transferred.

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Matthew S. Harris
Sole Panelist

Dated: April 17, 2008