Nominet UK Dispute Resolution Service

DRS 02829

The BOC Group Plc and BOC Limited v. Eaton Engineering (Herts) Ltd

Decision of Independent Expert

1.	Parties:

Complainants:	The BOC Group Plc & BOC Limited 
Country:		GB

Respondent:	Eaton Engineering (Herts) Limited
Country:		GB

2.	Domain Name
bocedwards.co.uk ("the Domain Name"). 
3.	Procedural Background
3.1	Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively).

3.2	Nominet received the Complaint on 29 July 2005, validated it and sent it on to the Respondent on 1 August 2005, advising the Respondent it had 15 working days, until 23 August 2005, to submit a Response.  The Respondent failed to submit a Response by 23 August 2005, or at all.  The parties were informed on 20 June 2005 that if the Complainants paid the requisite fees by 8 September 2005, the dispute would be referred to an independent expert and the fees were paid.

3.3	After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 8 September 2005. 

4.	Outstanding Formal/Procedural Issues

	4.1	Default

Although the Respondent has failed to submit a Response, the Procedure does not provide for a default decision in favour of the Complainants.  The Complainants must still prove their case to the requisite standard, see paragraph 15(b) of the Procedure.  However an expert may draw such inferences from a party's default as appropriate, see paragraph 15(c) of the Procedure, and I have indicated below the inferences I have drawn.

	4.2	Multiple Complainants 

The BOC Group Plc and BOC Limited (together the Complainants) are joint Complainants.  The Policy and Procedure expressly permit joint complaints and paragraph 3(b) stipulates certain procedural formalities including the nomination of a lead Complainant, and the specification of the Complainant who is to become the sole registrant of the Domain Name if transfer is sought.  In this case, the BOC Group Plc is nominated as both lead Complainant and as recipient of the Domain name.
5.	The Facts
5.1	The Domain Name was registered by the Respondent on 29 November 2004, as recorded in the Register and WHOIS reports supplied to me by Nominet.  I was also provided with a printed page showing, that as at 1 August 2005, the Domain Name led to a website branded Eaton Engineering, with their contact details and photographs, which said “our website is currently being updated.” It contained a number of what appear to be links—although it is not, of course, clear from that printout where they lead.  When I attempted to replicate this result on 19 September 2005, entering the Domain Name in the browser took me to the Complainants’ website at www.bocedwards.com. Who pointed it there, and why, I do not know.  It may be that the parties have come to some arrangement in the meantime or that the Respondent has pointed it to the Complainants’ website in reaction to the invocation of the DRS.

5.2	The Complainants say in the Complaint that the BOC Group Plc was incorporated as Brin’s Oxygen Company in 1886, and adopted its present name in 1982.  The second Complainant, BOC Limited, a subsidiary of the BOC Group Plc, acquired Edwards High Vacuum International in 1968 and, in late 1997, formed new businesses under the trading name BOCEdwards, which has become a well known name in the vacuum products business.

5.3	In the absence of a Response, I have no further information about the Respondent or its business.  

6.	The Parties' Contentions
	6.1	Complainant’s Case
	6.1.1	The Complainants say (and although I have significantly abbreviated the text, I have largely retained their own words): 
(a)	The Complainants have rights in a trade name that is similar to the Domain Name.  BOC Limited and the BOC Group Plc have developed significant reputation and goodwill in the name BOC Edwards since 1 January 1998. The Complainants have therefore established unregistered trade mark rights in the name BOC Edwards in the UK. 

(b)	The Complainants also have statutory rights in the names BOC and Edwards in the UK by virtue of registered trade marks of BOC and Edwards (though not of bocedwards together). They rely on one Community Trade Mark (CTM), for BOC, and 14 UK or national registered marks in total – 2 of Edwards and 12 of BOC, in a variety of classes—including service marks.  I note that the BOC Group Plc is the registered owner of all of the BOC marks and that BOC Limited is the registered owner of the Edwards marks.      

6.1.2	The Complainants say the Domain Name is an Abusive Registration in the hands of the Respondent, as follows: 

(a)	The Respondent is using the Domain Name to carry out business activities which are in direct competition with the Complainants’ business.  The Respondent offers vacuum pump services, including the sale and repair of vacuum pumps. 

(b)	The Respondent registered the Domain Name after the Complainants started business under the name BOC Edwards, and after the Complainants applied for and registered their trade marks. The Complainants’ statutory and common law rights therefore pre-date the Respondent's Domain Name. 

(c)	The Respondent's actions in registering and using the Domain Name constitute both trade mark infringement and passing off: by using the Domain Name in relation to goods or services identical to or similar to the Complainants’ goods and services where the Domain Name is identical to or similar to the registered trade marks of the Complainants or the trading name of the Complainants for such goods and services.

(d)	The Respondent creates a likelihood of confusion amongst members of the public, including a likelihood of association. Potential customers will mistakenly believe that the Respondent's business carried out on under the Domain Name is that of the Complainants or is in some way associated with the Complainants or that the goods and services sold or offered for sale by the Respondents are the goods and services of the Complainants or are in some way associated with the goods and services of the Complainants.

(e)	Given the Complainants’ reputation and goodwill in the name BOC Edwards, it is inevitable that the Respondent's registration and use of the Domain Name was intended to take unfair advantage of the Complainants’ reputation. The Respondent knew or should have known of the Complainants’ reputation in the vacuum pump industry when it registered the Domain Name.

(f)	The Domain Name is only used as a link to the Respondent's main website, www.eatonengineering. co.uk. This clearly shows that the only reason for the Respondent's conscious adoption of the Domain Name, was, and still is, to take advantage of the acquired reputation and goodwill which the Complainants own in the BOC Edwards name. By using the Domain Name, the Respondent is clearly trying to direct Internet traffic to its website.

6.1.3	In support of the Complaint, the Complainants submitted: 

(a)	BOC Group Plc’s Annual Report and Accounts for 2004;

(b)	An extract from BOC Group Plc’s Annual Report and Accounts for 1998;

(c)	Evidence of use of the name BOC Edwards in the form of 13 different brochures.

(d)	Copies of the CTM and national trade mark registrations. 
7.	Discussion and Findings
	7.1	General 
7.1.1	Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it’s an Abusive Registration, as defined in the Policy—paragraph 2(a) of which requires a Complainant to prove 2 elements: 
	"i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
	ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration."
7.1.2	A Complainant bears the burden of proof and must prove both elements on the balance of probabilities. 

	7.2	Complainants’ Rights 
	7.2.1	Rights are defined by the Policy as including, but not limited to, rights enforceable under English law. It includes rights to registered and unregistered trade marks, as well as contractual and other rights.  

7.2.2	Complainants can therefore rely on actual use of the name as creating a reputation or goodwill protected by the common law cause of action for passing off, see Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1980] RPC 31 HL; Reckitt & Colman Products Limited v. Borden Inc [1990] 1 All ER 873 and IRC v. Muller & Co.'s Margarine Ltd [1901] AC 217, 223 HL. This reputation is known as an unregistered mark.

7.2.3	The Complainants rely on the goodwill and reputation from use of the name since January 1998, by way of an unregistered mark, in addition to the registered marks.  They have proved their use by the extensive promotional materials submitted in evidence, and listed in paragraph 6.1.3 above. 

7.2.4	The Complainants have also submitted evidence of their registered trade marks—as noted in paragraph 6.1.1(b) above.  Although the ownership of the registered name marks is divided between them, with the BOC Group Plc being the registered owner of the BOC marks and BOC Limited being the registered owner of the Edwards marks, I assume that they will each be a licensee of each other’s marks in any event and therefore be entitled to use the same and to bring infringement proceedings as provided by the terms of such licences.  

7.2.5	In any event, the standard required to make out rights under the policy is not a high one, see decision of the Appeal Panel in Seiko v. Designer Time DRS00248, and I am satisfied that it is met here.

7.2.6	Paragraph 2(a)(i) of the Policy requires that the name or mark in which a Complainant has Rights "is identical or similar to the Domain Name." In determining this, the www. prefix is ignored, as are suffixes, here ".co.uk", see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359.  Spaces and use of upper or lower case, are immaterial.  In relation to Bocedwards we are therefore comparing like with like, as the names are identical.  

7.2.7	I find that the Complainants have proved, on the balance of probabilities, that they have Rights in the name BOC Edwards, which is identical to the Domain Name.
   
8.	Abusive Registration
	8.1	The second element a Complainant must prove under paragraph 2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in paragraph 1, as follows: 
	"Abusive Registration means a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the 
time when the registration or acquisition took place, took unfair 
advantage of or was unfairly detrimental to the Complainant's 
Rights; or

ii. has been used in a manner which took unfair advantage of or 
was unfairly detrimental to the Complainant's Rights"

8.2	Paragraph 3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration.  The Complainant relies on a variety of these factors, in the manner set out in its grounds for complaint, summarized in paragraph 6.1.2 above.

8.3	The DRS does not decide issues of trade mark infringement or passing-off per se, which are matters for the courts.  I will not therefore make any finding as to those.  The DRS is concerned solely with applying factors which evidence Abusive Registration, as set out in paragraph 3 of the Policy and otherwise.  I will not therefore deal with ground 6.1.2 (c) above.

8.4	I find, however, that the Complainants have made out Abusive Registration.  The Respondent’s registration was unfairly detrimental to the Complainants, in the manner alleged in grounds 6.1.2 (b), (e) and (f) above.   The name was exclusively referable to the Complainants and, that being the case, it is difficult to see how another party could fairly, or without causing detriment or disruption, acquire an identical domain name.  In Chivas Bros. Ltd –v- D. W. Plenderleith, DRS 00658, the Expert, and founding father of the DRS, Tony Willoughby, laid down the following 4 part test which can be usefully applied here.  Where a Respondent registers a Domain Name: 1) identical to a name in respect of which a Complainant has rights; 2) that name is exclusively referable to the Complainant; 3) there is no obvious justification for the Respondent having adopted that name; and 4) the Respondent has come forward with no explanation for having selected the Domain Name; it will ordinarily be reasonable to infer that the Respondent registered the Domain Name for a purpose and that that purpose was abusive. I agree and find that this was an Abusive Registration under paragraph 3aiC of the Policy. 

8.5	It is accordingly unnecessary for me to deal with unfairly detrimental use, as alleged in ground 6.1.2 (d) above, but I would also have found that ground to be made out.   

9.	Decision

Taking all the circumstances of this dispute into account, I find the Complainants have Rights in a name identical to the Domain Name and the Domain Name in the hands of the Respondent is an Abusive Registration and direct that the Domain Name be transferred to the lead Complainant—the BOC Group Plc.   

Victoria McEvedy 
22 September 2005