Brabus GmbH v Brabus Individuals (UK) Ltd [2004] DRS 01988 (17 October 2004)

Nominet UK Dispute Resolution Service

DRS 01988

Brabus GmbH –v- Brabus Individuals (UK) Ltd.

Decision of Independent Expert

1.	Parties: 

Complainant:		Brabus GmbH
Address:	Brabusallee
	Bottrop
Postcode:	46240
Country:	DE

Respondent:		Brabus Individuals (UK) Ltd.
Address:	Brabusallee
	Bottrop
Postcode:	46240
Country:	DE

2.	Domain Name:

brabus.co.uk (“the Domain Name”)

3.	Procedural Background:

The Complaint is dated 26 August 2004 and was entered into the Nominet system on 31 August 2004.  Nominet validated the Complaint and notified the Respondent of the Complaint by letter dated 8 September 2004, informing the Respondent that it had until 29 September 2004 to respond to the Complaint.  The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant on 30 September 2004.

The Complainant duly paid the appropriate fee for a decision of an Expert pursuant to paragraph 8 of the Nominet UK Dispute Resolution Service Procedure (“the Procedure”).

On 11 October 2004, Tony Willoughby, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues (if any):

The Respondent has failed to submit a Response to Nominet in time in accordance with paragraph 5(a) of the Procedure.

Paragraph 15(b) of the Procedure provides inter alia that “if in the absence of exceptional circumstances, a party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a decision on the Complaint.”

Generally, the absence of a Response from the Respondent does not in the Expert’s view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.  

5.	The Facts:

The Domain Name was registered by the Respondent with the permission of the Complainant on 21 February, 2000. 

The further facts, such as they are claimed to be, are set out in the Complaint, which is reproduced in full under the next heading.

6.	The Parties’ Contentions:

Complainant:

The Complaint reads as follows:

“I confirm that Domain Name(s) in dispute are [sic] identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

Brabus GmbH is holder of the trademark "Brabus" registered as EC-trademark no. 002779981. Brabus Individuals (UK) Ltd. was contractually entitled to use this brand during the term of an importer agreement concluded between Brabus GmbH and Brabus Individuals (UK) Ltd. This importer agreement was terminated as of 27th July 2004. Thus, Brabus Individuals (UK) Ltd. is no longer entitled to use the "Brabus" brand. Nevertheless, the internet site "www.brabus.co.uk" is still operated by Brabus Individuals (UK) Ltd. As "Brabus" is a well known brand in connection with the tuning of Mercedes-Benz vehicles (we sell our products in more than 90 countries around the world, for product details see our internet site "www.brabus.com") and as we intend to continue the marketing of our products in the UK, we are of the opinion that the use of the internet domain "www.brabus.co.uk" by Brabus Individuals (UK) Ltd. is abusive and we apply for the transfer of the rights for this internet-domain to Brabus GmbH. Moreover it should be revealed, that Brabus Individuals (UK) Ltd. was placed into liquidation. In charge for the liquidation is Hurst Morrison Thomson Corporate Recovery LLP, 5 Fairmile, Henley on Thames, Oxfordshire, RG9 2JR. Please note that Brabus Individuals (UK) Ltd. was formerly known as Brabus UK Ltd. and is still registered with Nominet.uk under that (former) company name as registrant of the domain ‘brabus.co.uk’ “.

Respondent:

The Respondent has not responded 

7.	Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant’s Rights

The Complainant claims to have trade mark rights in the word mark BRABUS which it claims is registered as a CTM under number 002779981. However, the Complainant has produced nothing to support that assertion, not even a copy registration certificate.

Absent the generic ‘.co.uk’ domain suffix, which can be ignored for this purpose, the Domain Name is the Complainant’s claimed registered trade mark.

Clearly, if the Complainant has the trade mark rights it claims to have, the Complainant has rights in respect of a name or mark identical to the Domain Name and has overcome the first hurdle.

Given the Expert’s finding in respect of the second hurdle, ‘Abusive Registration’, the point is academic. For present purposes the Expert will assume that the Complainant is indeed the owner of registered rights in the trade mark BRABUS.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-

	“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.”

There is no suggestion that the Respondent registered or acquired the Domain Name improperly. The Complainant accepts that the Respondent registered the Domain Name in good faith. The Respondent was contractually entitled to register it and to use it. 

The Complaint contains no details of the Respondent’s current use of the Domain Name. The Complainant simply asserts that the Respondent is no longer entitled to use it. No particulars are provided. In fact, the Expert elected to visit the site at www.brabus.co.uk and found himself at the Complainant’s site at www.brabus.com. That does not mean that the ‘use’ is not abusive, but nor is it evidence of abuse.

If the Respondent has wrongfully retained control of the Domain Name and/or is using it in breach of contract, there ought to be an argument that the Domain Name is an abusive registration for the purposes of the Policy, but the Expert must be provided with any adequate basis for making such a finding. The Complainant has not argued the issue in any detail and the Expert has not been provided with any evidence to support the Complainant’s assertions. It might have been useful for the Expert to have seen the terms of the contract.  It might also have been useful for the Expert to have been shown correspondence on the topic between the Complainant and the Respondent and/or the liquidator. 

The Expert can appreciate that it is most inconvenient for the Complainant that the Respondent is in liquidation and that the Domain Name registration is not within the Complainant’s control, but the Expert is not satisfied that the Respondent’s conduct can be categorised as abusive within the meaning of the Policy. There is nothing before the Expert to show any relevant abuse on the part of the Respondent.

8.	Decision:

The Complaint is dismissed.

______________________                                        17 October 2004                                      
         Tony Willoughby