The Complainant is Juno Healthcare Partners Ltd, United Kingdom (“UK”), represented by Stevens and Bolton LLP, UK.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Tom Hickman, IVF Professionals Ltd, UK, represented by Dutton Gregory LLP, UK. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 13, 2021, 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” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Response was filed with the Center on January 24, 2022. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 10, 2022. 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 The Complainant is a company registered in England and Wales, UK, incorporated on January 13, 2020, with its registered office in London, UK. It operates an in vitro fertilization clinic in London, UK, which opened to the public in January 2021 and has traded as “Aria” and “Aria Fertility” since that date. The Respondent, also a company registered in England and Wales, UK, incorporated on April 25, 2016, is a minority shareholder in the Complainant and is one of its founders. The Respondent is wholly owned by Dr. Cristina Hickman and Mr. Tom Hickman. Dr. Hickman worked at the Complainant’s clinic until operational difficulties arose in her relationship with its other founders and shareholders. Mr. Hickman provided information technology services to the Complainant via the Respondent. According to an invoice issued by the Respondent to the Complainant dated March 16, 2021, the Respondent sought payment for various software licenses and website structural elements, together with the sum of GBP 49.33 plus applicable tax for “Website Domain Purchase”. The Complainant states that this element of the said invoice relates to the registration of the disputed domain names and that it paid this invoice on March 26, 2021. The disputed domain name On September 27, 2021, the Respondent applied for UK Registered Trademark No. 3701742 for a figurative series of four marks featuring the words “Aria Fertility”, “Aria”, “A”, and “Aria Fertility”, later updated on October 28, 2021 to the single figurative mark “Aria” in a stylized script typeface, colored gold against a black background. On December 14, 2021, the Complainant filed an opposition to such mark, which is currently pending. On November 3, 2021, the Complainant applied for UK Registered Trademark No. 3717172 for the word mark ARIA FERTLITY. The application was published on January 14, 2022 but has not yet proceeded to grant. 5. Parties’ Contentions A. Complainant In summary, the Complainant contends as follows: Identical or confusingly similar The disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has used the names “Aria” and “Aria Fertility” since its clinic opened to the public on January 4, 2021. All trade under such names has been carried out by and for the benefit of the Complainant and all goodwill and reputation attaching thereto vests in the Complainant. The disputed domain name Rights or legitimate interests The Respondent has no rights or legitimate interests in the disputed domain names. The “Aria Fertility” name was chosen in July 2020 by the founders of the clinic, including Dr. Hickman. Dr. Hickman suggested that the disputed domain names be registered by Mr. Hickman as he had an account with the Registrar. The Respondent invoiced the Complainant for the associated expenses and there was no suggestion that the Complainant was effectively “renting” the disputed domain names. The Complainant would never have agreed to such an arrangement. After the relationship between Dr. Hickman and the Complainant deteriorated, on July 23, 2021, the Respondent took down the clinic’s websites at the disputed domain names. The Complainant has reinstated the websites at a replacement domain name and has had to change its staff email addresses. The Respondent has refused to hand over control of the disputed domain names in the context of the dispute between the Complainant and Dr. Hickman, which remains ongoing. Registered and used in bad faith The disputed domain names were registered by the Respondent on behalf of the Complainant and the Respondent was paid for them. The Respondent’s decision to take down the Complainant’s websites is either in the hope of receiving valuable consideration in excess of its out-of-pocket costs directly related to the disputed domain names, to prevent the Complainant from using its trading name in the disputed domain names, or for the purpose of disrupting the business of the Complainant. B. Respondent In summary, the Respondent contends as follows: Identical or confusingly similar The Complainant has issued trademark opposition proceedings in respect of the Respondent’s trademark application, which proceedings will be contested. Such mark and any related unregistered trademarks were the property of the Respondent. Use of them (and of the disputed domain names) was permitted by the Respondent by virtue of an unwritten license implied through a course of dealing between the Parties which was terminated by conduct on account of the ongoing shareholder dispute. Until ceasing on account of the shareholder dispute, the Complainant paid the Respondent a specific monthly amount in consideration of the payment of website services and for the continuation of the license in the Complainant’s favor. The issue of identity or similarity does not arise. Rights or legitimate interests The Respondent has established rights and legitimate interests by virtue of its ownership of the disputed domain names and all intellectual property rights relating to the “Aria” branding by operation of law, in respect of which no assignments were requested by the Complainant or granted by the Respondent. The disputed domain names were obtained by the Respondent on its own account with the express or at least implied consent of the Complainant in order to identify the website which the Respondent had created. The related trademark was applied for by the Respondent in the Respondent’s name, with the full knowledge and consent of the Complainant. All such rights vested in the Respondent to enable it to grant to the Complainant a revocable license to make use of such rights for as long as the relationship between the Parties endured. Registered and used in bad faith The Respondent’s conduct demonstrates no bad faith in connection with the registration of the disputed domain names, which were requested and consented to by the Complainant in or about July 2020 along with the registration of the Respondent’s registered trademark. The Complainant has stated through its legal representatives that it is the beneficial owner of the disputed domain names but accepts that its only entitlement may be a license to use them. The dispute is therefore whether such license was irrevocable or could be revoked at any time by conduct. Revocation took place in consequence of the Complainant’s personal treatment of Dr. Hickman and its generally hostile attitude to the Respondent, which attitude has led to an ongoing sexual discrimination employment tribunal case. The registration of the disputed domain names was not done as part of an attempt to obtain unlawful commercial gain or to disrupt the Complainant’s business. The license to use the disputed domain names was intended to promote and enhance the Complainant’s business when the Parties were working together in full cooperation. The Respondent reserves the right to make full use of the disputed domain names and other intellectual property rights in the course of its own business. This is the reason a license was granted to the Complainant in place of any assignment. The Respondent did not believe that the Complainant would always need to have the benefit of the rights granted by such license. 6. Discussion and Findings It will be readily apparent from perusal of the factual background section and the Parties’ various contentions that this is not a typical case of cybersquatting of the kind which the Policy was designed to address. It is a business dispute with complex issues which are far wider than those arising from the registration and use of the disputed domain names themselves. For example, there are at least two separate proceedings arising out of the Parties’ relationship that are already live in different fora, namely trademark opposition proceedings and an employment tribunal case. The Panel is mindful of the relevant observations of a panel in a relatively early case under the Policy, The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470. That panel stated that “[t]o attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”. Those observations still hold good today (see, for example, the discussion in Nalli Chinnasami Chetty v. Sambbasivam Nalli, Nalli’s SILKS SARI CENTRE,WIPO Case No. D2021-1831). In any event, in the present case, the Panel considers that the Parties’ multi-faceted intellectual property disputes arising from a complex factual background are better left to an alternative (court) forum in which the wider issues could be addressed including, for example, the Respondent’s copyright claim with regard to the website content and its assertion of an unwritten license implied through a course of dealing between the Parties. In such a forum, the Parties would be able likewise to take advantage of such procedures as applications for interim relief, discovery orders, oral testimony, and cross-examination, none of which are available under the Policy. For completeness, the Panel notes that had it considered this case on the merits, it would in any event have denied the Complaint on the third element assessment in particular. The Respondent evidently had the Complainant’s permission to register the disputed domain names as the Parties were cooperating in a business venture at the material time, well before their differences emerged. It is reasonable to infer that such registrations would therefore have been effected in good faith. There is no evidence before the Panel that, at the point of registration of the disputed domain names, the Respondent could have contemplated the dispute which later arose, nor is there any documentary evidence as to what registrant name the Respondent used for the disputed domain names. The Complainant asserts that the disputed domain names may have been registered initially in the Complainant’s name and subsequently transferred into the Respondent’s name, and that this may be suggestive of bad faith registration, but there is no evidence to that effect on the present record. There is likewise no evidence before the Panel that the Complainant requested, far less instructed the Respondent to register the disputed domain names in the Complainant’s own name. Any argument on the Complainant’s part that there was an implied term to this effect in the Parties’ (presumably verbal) contract would be met by the counter-argument on the Respondent’s part that, on the contrary, there was an implied license of intellectual property from the Respondent to the Complainant. There is no evidence before the Panel supporting the Complainant’s argument in particular, which would be sufficient to tip the balance of probabilities in its favor. In these circumstances, the Panel would most likely have found, on the basis of the present record, that the Complainant had failed to prove on the balance of probabilities that the disputed domain names were registered in bad faith. In this particular case, the manner in which the disputed domain names were subsequently used does not shed any light on the Respondent’s motivation at the time of their registration. The Panel takes no position on the merits of the various disputes that exist and are ongoing between the Parties and this Decision should not be taken as condoning or endorsing the Respondent’s actions in the use of the disputed domain names after the wider dispute between the Parties emerged. Finally, the Panel notes that the Decision is not addressed to any particular forum that may ultimately be seized of the matter. 7. Decision For the foregoing reasons, the Complaint is denied. Andrew D. S. Lothian
Sole Panelist
Date: February 24, 2022
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