Generic Top Level Domain Name (gTLD) Decisions

The Complainant is BioCare Limited, Lakeside, 180 Lifford Lane, Kings Norton, Birmingham B30 3NT, United Kingdom.

The Respondent is UK Scientific.com Ltd, Scientia House, 20 Tuxford Close, Oakwood, Derby DE21 2HH, United Kingdom.

The Domain Names are <biocare-diagnostics.com> and <biocarediagnostics.com>:

The Registrar of the Domain Names is Tucows Inc.

The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") by email on April 11, 2002, and in hardcopy form on April 15, 2002. The Center has verified that the Complaint satisfies the formal requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Tucows Inc. ("the Registrar") has confirmed that the domain names <biocare-diagnostics.com> and <biocarediagnostics.com> ("the Domain Names") were registered through the Registrar and that UK Scientific.com Ltd ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.

On April 24, 2002 the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was May 14, 2002.

The Response was received by the Center by email on May 11, 2002, and in hard copy form on May 16, 2002.

On May 22, 2002, the Center received a Supplemental Filing from the Complainant. On May 24, 2002, the Center received a Supplemental Filing from the Respondent. The Panel has been sent the documents, but no reason has been given why the Panel should depart from the normal procedure (Complaint and Response and no more) and the Panel declines to admit them into the evidence.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

The Complainant was incorporated in the United Kingdom on September 19, 1985. It has traded under the name BIOCARE since at least 1988. It is the proprietor of inter alia trade mark registration number 2,048,267 dated December 12, 1995 for BIOCARE (word) in Class 35 for pharmaceutical preparations etc.

The Complainant operates a website at http://www.biocare.co.uk. The domain name <biocare.co.uk> was registered on April 29, 1999.

The Respondent was incorporated in the United Kingdom on May 23, 2000. According to the Companies Registry printout exhibited to the Complaint the Respondent’s business area is "technical testing and analysis".

At some stage in early to mid 2001 (the Complaint says June 2001) John Stirling, a director of the Complainant, entered into discussions with Chris Evans, a director of the Respondent, over a joint venture to market medical diagnostic screening kits. The vehicle for the joint venture was to be Biocare Diagnostic Services International Limited (BDSI), which was incorporated in the United Kingdom on September 5, 2000, under the name Biocare Laboratories Limited. The name change took place on August 1, 2001. The shareholders in BDSI were to include Messrs. Stirling and Evans.

In the course of September 2001 a bank account was set up for BDSI. There is a dispute as to when this occurred but Barclays Bank PLC, Birmingham Kings Heath Solihull Group of Branches regards the opening of the account as having taken place on September 20, 2001 (Annex 29 to the Complaint).

On September 28, 2001, the Respondent registered the Domain Names along with the domain names <biocarediagnostics.co.uk> and <biocare-diagnostics.co.uk>. In due course the BDSI website was set up at http://www.biocare-diagnostics.co.uk

On November 5, 2001, Mr. Stirling signed a certificate certifying that Mr. Evans was the registered holder of 50 shares in BDSI.

Within a few days of the inception of the business (Mr. Stirling in a letter to Mr. Evans of November 26, 2001, identifies the date of inception of the business as being November 9, 2001) the joint venture collapsed. By that letter of November 26, 2001, Mr. Stirling and his wife called for BDSI to cease trading.

On December 17, 2001 representatives of the Complainant wrote to Mr. Evans and the Respondent. In that letter they state that any license from Biocare Limited for BDSI to use the name BIOCARE has been terminated. On the same date, Mr. Stirling on behalf of the Complainant writes to BDSI confirming termination of any previous license for BDSI to use the name BIOCARE as a trade mark or as part of its trading style.

On January 7, 2002 the Respondent issues an invoice to BDSI and the Complainant for expenses alleged to have been incurred for and on behalf of BDSI. The invoice is for a total of £9,807.43 plus VAT and includes within it a VAT inclusive charge of £34.16 for domain name registration expenses.

The Complainant contends that the Domain Names are confusingly similar to its trade mark BIOCARE.

The Complainant contends that the Respondent never had any rights or legitimate interests in respect of the Domain Names and points to the inter-partes correspondence in the course of which (December 18, 2001) Mr. Evans, on behalf of the Respondent, acknowledges that the Respondent "has no interest and never will have any interest in using the names Biocare, Biocare Diagnostics …"

The Complainant points out that any license to use the name Biocare was a license to BDSI, not the Respondent.

The Respondent’s explanation for the registration of the Domain Names in the name of the Respondent is that at the time BDSI "did not have a credit card facility or bank account". The Complainant dismisses that as a false explanation, because the bank account was opened on September 20, 2001.

The Complainant further contends that the Respondent registered the Domain Names in bad faith and is using them in bad faith.

In support of the bad faith registration claim the Complainant puts forward the following:-

1. The Respondent had no rights or legitimate interests in respect of the Domain Name.

2. The Respondent failed to make the Complainant aware of the Domain Name registrations or deliberately concealed the fact.

3. "When the Complainant did have knowledge of registration of the Domain Names through the searches made by its authorized representative on December 12, 2001, and the Respondent then began to assert post facto that it did have a right or legitimate interest, it was then too late for it to acquire the same, since it could only do so by virtue of the existence of Biocare Diagnostics, which had by that time ceased both to trade and to have any licence from the Complainant to use the Biocare name and trade mark".

[NB the Panel quotes this section in full partly because the Panel does not understand how this supports the bad faith registration claim, but partly also because it seems to acknowledge that when BDSI was alive the Respondent might have had an excuse for registering (if not a legitimate interest in respect of) the Domain Names.]

4. The false reason given by Mr. Evans for having registered the Domain Names in the name of the Respondent.

In support of the bad faith use claim the Complainant cites the fact that the Respondent will only agree to transfer the Domain Names to the Complainant if the Complainant pays the full amount of the invoice dated January 7, 2002, i.e. a sum well in excess of the Respondent’s registration expenses.

The Respondent states that it registered the Domain Names in good faith for the benefit of BDSI. One of the ‘.uk’ domain names was used for the benefit of the BDSI website.

The Domain Names were registered in the name of the Respondent because at that time Mr. Evans did not have access to relevant information about BDSI’s bank account.

At all times BDSI was aware of the existence of the Domain Name registrations and the website. The Respondent expresses surprise at the Complainant’s claimed ignorance of the Domain Name registrations and the website given that the BDSI notepaper used by Mr. Stirling identifies the website and necessarily therefore one of the domain names (albeit one of the names in the .uk domain).

At the outset the Panel wishes to make clear that the Policy is no substitute for trade mark infringement and passing off proceedings. Still less is it a means of resolving what in this case is evidently a bitter dispute between the parties and their directors.

The Policy is designed to deal with cyber squatting which in the main is the practice of deliberately registering someone else’s trade mark as or as part of a domain name with the intention of causing damage to the trade mark owner. The intention may be to extort money from the trade mark owner or it may be to block the trade mark owner from registering the domain name himself, or it may be with a view to disrupting his business or with a view to deceiving internet users and thereby deriving a free ride on the back of the trade mark owner’s goodwill.

In very broad terms the essential question for the Panel is this: on September 28, 2001, when the Respondent registered the Domain Names did it do so with the intention of causing damage of any kind to the Complainant?

The matters required to be proved by the Complainant are set out in paragraph 4(a) of the Policy, namely:-

(i) The Domain Names are 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 interest in respect of the Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

The Domain Names comprise the Complainant’s trade mark followed by the descriptive word "diagnostics" and then the generic ‘.com’ suffix. While "diagnostics" does not fall within the scope of the Complainant’s trade mark registration, it is manifestly within the broad scope of activity that the Complainant wished to become involved in, when it participated in the setting up of BDSI.

The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.

In the view of the Panel there is an important difference between having on the one hand a right or legitimate interest in respect of a domain name and on the other hand a legitimate excuse for having registered that domain name.

It is not in dispute that the Domain Names are (or were) names exclusively referable to BDSI. The Respondent never had any interest whatsoever in respect of the Domain Names.

The Panel finds that the Respondent has and had no rights or legitimate interests in respect of the Domain Names.

The Complainant’s contention under this head stands or falls on the allegation that the Respondent’s reason for having registered the Domain Names is false. For the allegation to succeed, the Complainant has to show that the Respondent was aware of the existence of the bank account and the credit card details.

Ordinarily, when registering domain names the most convenient way of doing it, if one does not have an account with the registrar, is to effect registration by telephone or online and giving one’s credit card details. The Panel finds it significant that none of the documents put before it mentions any credit card facility.

Furthermore, in this context the Panel attaches weight to two of the annexes to the Complaint. Annex 27 is a one-page extract from a letter from Mr. Evans to the Complainant’s representative. One of the paragraphs of the exhibited page starts "we were not permitted access to the company bank details". Annex 28 comprises minutes produced by the Complainant of a meeting with the bank, which is alleged to have taken place on September 7, 2001. There is a dispute as to the date of the meeting and the Respondent claims not to have approved the minutes. Nonetheless, Mr. Stirling is reported to have told the bank manager "we want to control the finances". In the context in which that was said, the "we" clearly refers to the Complainant.

From the documentation put before the Panel by the Complainant the Panel has gained the impression that Mr. Stirling was very much the controlling force behind the joint venture and wished to maintain close control of its financial affairs.

The Panel finds on the balance of probabilities that as at September 28, 2001, Mr. Evans and the Respondent knew nothing of the details surrounding BDSI’s bank account/credit card facilities and that in order to get the Domain Names registered for the benefit of BDSI they adopted the sensible and most convenient approach available to them, which was to use the Respondent’s credit card for the purpose. At that stage (September 28, 2001) there is no reason to suppose that the Respondent or Mr. Evans had any ulterior bad faith motive.

In reviewing the evidence on this topic the Panel was distinctively unimpressed with the Complainant’s declared ignorance of the website when the paper Mr. Stirling was using identified it.

Even if the demand for payment of the full invoice in return for the Domain Names is "over the top" (and the Panel makes no finding to that effect), it is of no assistance to the Complainant. The Complainant has to prove that the Respondent deliberately registered the Domain Names with that demand or some such demand in mind. The Complainant has failed to satisfy the Panel that that was the Respondent’s intention on September 28, 2001.

The Panel finds that the Complainant has failed to prove that the Respondent registered the Domain Names in bad faith and is using them in bad faith.

The Complaint is dismissed.