The Complainant is Cleanroom Equipment Limited of Carlingford, Ireland, represented by James H Murphy & Son, Ireland.
The Registrant is Eamon Bowe, MCR Outsourcing Limited of Dublin, Ireland, represented by Peter Dempsey BCL. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018, via email. On the same day, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On December 4, 2018, IEDR transmitted by email to the Center its verification response confirming the Registrant as the registrant and providing contact details.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on December 5, 2018. In accordance with the Rules, paragraph 5.1, the due date for Response was January 5, 2019. The Response was received on January 4, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on January 18, 2019. 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 was incorporated on October 1, 1996, and, since then, it has traded under the name “Cleanroom Equipment”. The Complainant describes its business as “the manufacture, sale and fitting of [c]leanroom environments and products for specialised applications”. As explained by the Complainant, the term “clean room” or “cleanroom” denotes a location where an industrial process requires a greatly reduced risk of contamination. The Complainant manufactures and sells the specialised equipment used to achieve this.
The Complainant originally owned and used the disputed domain name but this was deleted in around August 2010 in circumstances which are in dispute (see section 6C below).
The Registrant has also traded since 1996. According to the Registrant, it was originally incorporated as an outsourcing company but over the years it has grown to provide cleaning, security, engineering services, and personnel to a broad range of clients, but particularly in the pharmaceutical sector. The Registrant says that it operates in the “furniture” area of the cleanroom market.
The Registrant registered the disputed domain name on May 24, 2016.
On May 10, 2018, the Complainant’s solicitors sent a letter before action to the Registrant. No response was received and a chasing letter was sent on May 23, 2018. The Registrant’s solicitors responded on May 28, 2018.
The Registrant registered the business name “MCR Cleanroom Equipment” as business name with the Irish Companies Registration Office (“CRO”) on May 31, 2018.
There was further correspondence between the Parties’ solicitors in June 2018.
The Registrant has used the disputed domain name for a website branded with a logo bearing the words “cleanroom equipment.IE” and, beneath this, the words “Part of MCR Group” in smaller font. The following text also appears:
“Who We Are
We are the leading supplier of Cleanroom Equipment to the Irish pharmaceutical and manufacturing industries.
What We Do
Within the Cleanroom Equipment Division, we supply a full range of Stainless Steel GMP compliant cleanroom solutions for all needs.
Bespoke Projects
Together with a highly skilled team of designers, projects managers, engineers and site engineers, as well as long term partnerships...” 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions:
The Complainant is widely known as the leading provider of equipment for cleanrooms in the Republic of Ireland.
The name “Cleanroom Equipment Ltd” is a protected identifier deriving from registration of its name with the CRO because other companies are not allowed to register with similar trade names.
The name “Cleanroom Equipment” is also a protected identifier arising from goodwill generated from the Complainant’s use of this trading name, as evidenced by letters from business contacts and newspaper articles.
The Complainant has made a substantial investment in the disputed domain name. Its business model is largely based on generating sales via Internet enquiries.
The disputed domain name is identical or misleadingly similar to the Complainant’s protected identifier.
The Registrant has no rights in law or legitimate interests in the disputed domain name because its registration and use of the disputed domain name constitutes passing off.
The disputed domain name was registered or was subsequently used in bad faith.
The Registrant has committed the tort of passing off.
The Registrant registered the disputed domain name to block the Complainant from reflecting its name in a corresponding domain name and has engaged in a pattern of such conduct.
The Registrant registered the disputed domain name primarily to disrupt the business of the Complainant, its competitor.
The Registrant intentionally used the disputed domain name to create a likelihood of confusion with the Complainant’s name.
The Complainant lost the disputed domain name through inadvertence on the part of the Complainant’s service provider. The Complainant was subsequently advised that the disputed domain name had been “registered elsewhere” but it only became aware that the disputed domain name was being used in direct competition with the Complainant in early 2018.
After loss of the disputed domain name, the Complainant registered as a replacement.
The Registrant trades in an identical field to that of the Complainant. The Registrant uses the name “MCR Cleanroom Equipment”, whilst operating the disputed domain name.
The Registrant’s use of the disputed domain name in conjunction with search engine optimisation (“SEO”) means that any prospective customer of the Complainant is effectively directed to the Registrant. The Registrant has made no concerted attempt to distance itself from the Complainant. The Registrant is intentionally deceiving customers and passing itself off as the Complainant.
The Complainant has suffered damage in that the number of Internet enquiries to the Complainant have dropped over the period from 2015 to 2018. At least part of this must have been caused by the Registrant’s registration of the disputed domain name. In any case, likelihood of loss is sufficient and that is established here by the Registrant’s use of the disputed domain name for its website with no attempt to distance itself from the Complainant.
The Registrant did not register a trading company using the name “Cleanroom Equipment” – at the time of registering the disputed domain name, or later. This is because such a registration would have been prohibited due to its similarity with the Complainant’s name. The Registrant’s registration of this name as a trading name following receipt of the letter from the Complainant’s solicitors affords no protection to the Registrant against its wrongful acts.
The mere registration of a domain name to profit from the goodwill of another undertaking renders it an “instrument of fraud”, entitling the owner of the goodwill to an injunction. The case is even stronger where the registrant is trading in opposition to the goodwill owner.
Here, the disputed domain name is not just similar but identical to the name under which the Complainant has traded for more than 20 years and is being used in the same industry.
The foregoing amounts to “cybersquatting”. B. Registrant
The following is a summary of the Registrant’s contentions:
The Complainant’s evidence as to its protected identifier is deficient. While the name of the Complainant may have acquired a reputation that may be capable of prima facie legal protection, so have countless other cleanroom equipment suppliers. There are at least 37 of these who are members of the Irish Cleanroom Society.
There is no evidence that the Complainant is a leading cleanroom equipment provider.
Even if the Complainant does have rights in a protected identifier, the disputed domain name should not be treated as identical or misleadingly similar to it, given the descriptiveness of the name in issue.
The Registrant possesses rights or legitimate interests in the disputed domain name.
The Registrant uses the website at the disputed domain name to showcase projects and equipment manufactured by its regional partners.
The Registrant has made a bona fide offering of goods and services via its website at the disputed domain name and has incurred significant expenditure thereon.
The Registrant is commonly known by the disputed domain name, despite not having acquired trade mark rights.
The Registrant was not aware of the Complainant’s existence until it received the Complainant’s letter of May 10, 2018.
The Registrant’s business name was registered on May 31, 2018, on the advice of the Registrant’s solicitor and in accordance with the Registration of Business Names Act 1963. The Registrant was entitled to do this and it was not an act of bad faith.
The Registrant is making legitimate commercial and fair use of the disputed domain name without intent to misleadingly divert customers or tarnish the Complainant’s alleged protected identifier.
The Registrant has used the disputed domain name in connection with its dictionary or descriptive meaning, which it was entitled to do in the absence of circumstances indicating that its aim was to profit from and exploit the Complainant’s alleged protected identifier. There is no such evidence in this case.
A Google search would bring up many results for Irish companies using “clean room” and “equipment”.
Contrary to the Complainant’s claim that the disputed domain name was “lost”, in fact it jettisoned the disputed domain name. This shows that the Complainant did not have a “proper” serious identifier.
Evidence indicates that the Complainant had registered the domain name before the disputed domain name was “lost”, not afterwards as it claims.
The Registrant was entitled to register the disputed domain name, which had been deleted for some six years by that time. The Registrant registered it as a new domain name. During that period it was available for registration by any number of cleanroom equipment service providers. No inference should be drawn from the Complainant’s prior ownership of the disputed domain name given the Complainant’s inaction, the dormancy of the disputed domain name for six years and its descriptive nature.
The Registrant questions the veracity of the Complainant’s schedule of investment in the disputed domain name. In fact this appears to relate to the Complainant’s present website at “www.”.
The Registrant is not guilty of passing off or cybersquatting.
The Parties have no business relationship and are not competitors, or at least not direct competitors. They offer different goods and services. The Registrant operates in the “furniture” area of the market whereas the Complainant appears to do so only in a limited way. The Complainant’s website says that it is a specialist contractor in the design, construction, certification, and fitting of clean rooms.
There is no documentary evidence supporting the Complainant’s claim that confusion has arisen in relation to this non-distinctive, descriptive name.
The use of the “MCR” branding in various places on the website as well as the Registrant’s alignment with “VIP 3000” and the Irish Cleanroom Society removes any possibility of confusion. The Registrant’s website has never tried to hide the fact that it is part of the MCR group.
There is no evidence that the decline in the Complainant’s revenues from 2012 to 2017 is a result of the Registrant’s activities rather than market forces.
The disputed domain name was not registered or used in bad faith. 6. Discussion and Findings
Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that:
- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights;
- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith. A. Identical or Misleadingly Similar
Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
Amongst other things, the Complainant relies on unregistered rights arising from its use of the name “Cleanroom Equipment”. The difficulty facing the Complainant is illustrated by the fact that the Complainant describes itself as a supplier of equipment for cleanrooms. The Complainant is therefore seeking to establish trade mark rights in a name which is not just descriptive but which is in fact wholly descriptive of the products supplied by the Complainant.
At this point it is relevant to refer to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), panels in IEDR Policy cases have previously considered it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. See, e.g., MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd.,WIPO Case No. DIE2018-0002 and Mr. Rooter LLC v. David Doherty and Unbeatable Drain Cleaning Limited,WIPO Case No. DIE2018-0006.
Section 1.3 of WIPO Overview 3.0 explains that the Complainant must show that its mark has become a distinctive identifier which the public associate with the Complainant’s goods and services and that, the more descriptive the name, the higher is the onus on the Complainant.
The Panel also notes that, under the UDRP, the corresponding and similar first element is treated as a threshold test concerning a trade mark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the other elements. See section 1.7 of WIPO Overview 3.0.
Here, the Complainant has been trading under the name “Cleanroom Equipment” for over 20 years and its evidence includes a batch of letters from customers and suppliers, all referring to their long-standing relationships with “Cleanroom Equipment”. Indeed, the Registrant concedes that the Complainant may have acquired a reputation that may be capable of prima facie legal protection – while at the same time forcefully denying that this constitutes a protected identifier.
The Panel is of the view that, for the purpose of this threshold test, the Complainant has established limited common law trade mark rights within a certain segment of the market in the name “Cleanroom Equipment” as a source of cleanroom equipment products, albeit that the phrase is also widely used in a descriptive sense.
The Panel would add that, in accordance with section 1.3 of WIPO Overview 3.0, even though the Panel has found that the Complainant has standing based on unregistered or common law trade mark rights, the strength of the Complainant’s mark will be very relevant when evaluating the other elements of the IEDR Policy.
The disputed domain name is identical to the Complainant’s protected identifier, disregarding the country code Top-Level Domain (“ccTLD”) “ie”.
The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy. B. Rights in Law or Legitimate Interests
It is unnecessary to consider this element in light of the Panel’s conclusion under the third element below. C. Registered or Used in Bad Faith
The Complainant devotes much of its submission to the issue of passing off but, in this proceeding, the Panel’s focus is on whether the disputed domain name was registered or used in bad faith in accordance with the IEDR Policy. In particular, the Complainant must establish that the Registrant registered or used the disputed domain name to target the Complainant rather than due to the descriptive or generic qualities of the disputed domain name. The Complainant has some work to do here given that, as discussed above, the term “cleanroom equipment” wholly describes the products supplied by both Parties. The Complainant’s position is made even more difficult by the fact that it does not expressly address the descriptiveness issue, instead proceeding on the assumption that its name is entitled to protection.
The Panel’s starting point is to consider the likelihood that the Registrant knew about the Complainant’s business when it registered or started using the disputed domain name. Even if the Registrant had been so aware, that would not necessarily have been dispositive in the Complainant’s favour given the nature of the disputed domain name. But, in any case, the Registrant says that it only became aware of the Complainant when it received the Complainant’s legal letter in May 2018.
It might be thought surprising that the Registrant disclaims knowledge of an industry competitor. The Registrant justifies this claim, and seeks to distinguish itself from the Complainant, on the grounds that the Registrant simply supplies the “furniture” for clean rooms whereas the Complainant provides a wider clean room service including design and construction. But, even if this is correct, there is clearly significant degree of overlap in the Parties’ respective goods/services.
In the Panel’s view, however, the Registrant is on somewhat stronger ground when it observes that this is a relatively crowded marketplace. The Registrant has provided evidence that there are at least 37 suppliers of clean room equipment who are members of the Irish Cleanroom Society and, no doubt, there are others who are not.
The Registrant also contests the Complainant’s claim to be the leading provider of clean room equipment in the Republic of Ireland. The Panel agrees that the evidence provided by the Complainant does not bear out the Complainant’s claim. In particular, there is no comparative information indicating how the Complainant ranks within the sector, whether in terms of turnover or otherwise.
The Complainant has produced the following figures for its own annual turnover:
2012 – EUR 509,000
2013 – EUR 937,000
2014 – EUR 313,000
2015 – EUR 150,000
2016 – EUR 138,000
2017 – EUR 156,000
In the Panel’s view, these figures do not convey the impression that the Complainant is an industry-leading undertaking. The Panel notes that, in 2016 when the disputed domain name was registered, its turnover was some EUR 138,000.
The Complainant has provided a schedule which is said to show “Investment and expenditure on Domain and related domains and expansion of Internet based sale” totalling some EUR 56,000 covering 1996 to 2018. To the Panel, this does not appear to be a substantial sum for online marketing when spread over such a long period. The total expenditure for 2016 was just EUR 200.
Accordingly, although the Complainant has undoubtedly been trading for many years and is well regarded by those who deal with it, the Panel is not convinced from the evidence before it that the Complainant is such a major player that it must inevitably have come to the Registrant’s attention.
The Complainant also relies on the contents of the Registrant’s website, described in section 4 above. While the website uses the term “Cleanroom Equipment” not only to describe the Registrant’s products but also to denote a division of its business, the Panel has not been shown anything on the website which indicates that the Registrant selected or used the name other than for its descriptive or generic qualities referable to the nature of the goods being promoted on the website. For example, there is no evidence that the Registrant has copied any aspect of the Complainant’s branding.
The Complainant has produced a screenshot showing search results for the Complainant’s current website and the Registrant’s website next to each other – apparently taken from Google although this is not entirely clear as only the search results themselves are shown without the header, search term or any other results. As one might expect, the Registrant search result is headed “Homepage – Cleanroom Equipment” and includes various other references to “Cleanroom Equipment” in line with the content of its website. There is nothing here which is materially different to the use of this term on the Registrant’s website and so, in the Panel’s view, it does not assist the Complainant.
The Complainant relies on the fact that the disputed domain name was formerly owned by the Complainant, presumably on the grounds that the Registrant was likely to have come across the Complainant’s website at some point. However, the Complainant does not say when the disputed domain name was deleted. It was left to the Registrant to produce evidence indicating that in fact this occurred as long ago as 2010 – six years before the Registrant registered the disputed domain name.
The Registrant’s evidence also indicates that, somewhat at odds with the Complainant’s claim that it had been advised that the disputed domain name has been “registered elsewhere”, the disputed domain name appears to have been available for registration for the entire six-year period until it was acquired by the Registrant. It further appears that the Complainant had in fact registered its alleged replacement domain name before deletion of the disputed domain name, contrary to its claim to have registered it afterwards.
All of this tends to support the Registrant’s claim that the disputed domain name was originally abandoned by the Complainant, rather than being “lost” as the Complainant claims. Even if so, that would still not have justified the Registrant registering or using the disputed domain name to target the Complainant. However, this aspect of the case does raise a question mark over the credibility of the Complainant’s claims more generally.
As to the Complainant’s assertion that the reduction in the number of Internet enquiries since 2015 was due in part to the Registrant’s registration of the disputed domain name, the Panel agrees with the Registrant that the Complainant has provided no evidence demonstrating the connection. In any case, the Complainant has admitted that it is almost impossible to accurately determine the origin of a sales lead. The Panel would add that, even if the Complainant had demonstrated actual or likely loss arising from of the Registrant’s registration or use of the disputed domain name, that would not automatically demonstrate bad faith in the circumstances of this case; such losses might have been attributable to fair competition.
Finally, the Panel does not consider that anything turns on the Registrant’s registration of the business name “MCR Cleanroom Equipment” following receipt of the Complainant’s initial legal communications. The Complainant is right to say that this step affords no protection to the Registrant in relation to the issues raised in this case. Equally, the Panel does not consider that this action incriminates the Registrant either.
In conclusion, having carefully considered all of the evidence produced by the Complainant, the Panel does not consider that it has overcome what in the circumstances of this case is its relatively high burden, namely of establishing that the Registrant registered or used the disputed domain name to target the Complainant, rather than for its wholly descriptive qualities referable to the Registrant’s products.
The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 1.1 of the IEDR Policy.
The Panel would add that this is a limited administrative proceeding based on the IEDR Policy where the Panel is restricted to consideration of the evidence placed before it and without the benefit of the tools of litigation such as document disclosure or witness testimony. This decision does not of course prevent the Complainant pursuing a case for passing off or otherwise in the Irish courts if it considers it appropriate to do so. 7. Decision
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Sole Panelist
Dated: February 8, 2019
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