Kurt Geiger Limited-v- eclark.net

Nominet UK Dispute Resolution Service

DRS 3269

Kurt Geiger Limited and 
eclark.net

Decision of Independent Expert

1.	PARTIES:

	Complainant:			Kurt Geiger Limited
		Country			GB	

	Respondent:			eclark.net
		Country			CR

2.	DOMAIN NAME:

kurtkeiger.co.uk (the “Domain Name”)

3.	PROCEDURAL BACKGROUND:

3.1.	On 4 January 2006 the dispute was entered into the Nominet Dispute Resolution Service (DRS). The Complaint was validated the same day. The chronology of the dispute provided by Nominet states that the Complaint documents were generated on 6 January 2006.  This date appears to be incorrect as the file relating to the dispute indicates that the Complaint documents were forwarded to the Respondent by email, fax and hard copy on 4 January 2006.  

3.2.	On 12 January 2006 an electronic Response was entered into the system by Nominet and forwarded to the Complainant the same day. It appears from the chronology of the dispute that the Response hard copies were not received by Nominet until 20 January 2006.

3.3.	On 23 January 2006 the Complainant filed a Reply. 

3.4.	On 17 February 2006 the Complainant paid the fee for a decision by an Independent Expert pursuant to paragraph 6 of the DRS Policy (the “Policy“). The undersigned, Veronica Bailey was invited to act as Expert to determine this dispute and, having confirmed her impartiality and independence, was formally appointed Expert on 24 February 2006. 

4.	OUTSTANDING FORMAL/PROCEDURAL ISSUES

4.1.	On 6 February 2006 the Complainant sought to make a further submission under paragraph 13(b) of the DRS Procedure, a copy of which was forwarded to the Respondent on 7 February 2006. At the Expert’s request the non-standard submission was passed to the Expert for consideration.

5.	FACTS

5.1	The Domain Name, kurtkeiger.co.uk, was registered by the Respondent on 16 February 2005.

5.2	The Complainant was incorporated on 10 December 1969 having the name Kurt Geiger Holdings Limited and company number 968046.  The Complainant changed its name to House of Frazer (Shoes) Limited on 13 April 1989 and subsequently changed its name to Kurt Geiger Limited on 31 January 1993. 

5.3	The nature of the Complainant’s business is listed at Companies House as “retail of footwear and leather goods”.

5.4	The Complainant owns registrations of the trade marks KURT GEIGER, KURT GEIGER (Stylised), KG by KURT GEIGER, KG KURT GEIGER logo, KURT GEIGER 7 either before the UK Trade Marks Registry or the Community Trade Marks Office. All but one of the trade marks pre-date the registration of the Domain Name.  The class of goods and services for which the marks are registered include among other things footwear.

5.5	The Complainant is the registered owner of the domain name <kurtkeiger.com>.

5.6	The Domain Name in dispute resolves to a website (the ‘Website’) which has the words ‘KURT GEIGER’ on the top left hand side and the front page which is a genealogy site.  The site has links to other sites that promote footwear. 

6.	THE PARTIES' CONTENTIONS:

Complaint
6.1	The Complainant asserts that the Domain Name is identical or similar to a name or mark in which the Complainant has rights and submits that:	
(i)	the Complainant has numerous UK and Community trade marks for KURT GEIGER that predate the Domain Name;
(ii)	the Complainant’s corporate name, Kurt Geiger Limited is similar to the Domain Name; 
(iii)	the Complainant is the registrant of the Domain Name kurtgeiger.com; 
(iv)	the Complainant has built up a very substantial goodwill and reputation in the KURT GEIGER trade mark in connection with footwear as a result of the use of this trade mark within the UK and overseas over decades and is recognised as being one of the leading providers of upmarket footwear in this country.

6.2	The Domain Name in the hands of the Respondent is abusive for the following reasons:

(i)	the Complainant has established goodwill and reputation in the name KURT GEIGER;
(ii)	the Complainant has numerous trade mark registrations both in the UK and abroad for the KURT GEIGER name and it made substantial sales of footwear bearing these trade marks;
(iii)	the Domain Name is been used in connection with a website to sell branded footwear;
(iv)	the Respondent must have been aware that the name KURT GEIGER denoted the Complainant’s goods;
(v)	the registrant has engaged in a pattern of registering domain names which reflect the trade marks of third parties.  Under the ownership of eclark.net the registrant has registered 245 domain names including altonpark.co.uk, mickymouse.co.uk, millfieldsschool.co.uk, bootsphoto.co.uk, lilliewhites.co.uk, nextclearance.co.uk among others.
(vi)	the Domain Name was primarily registered to divert sales of the Complainant’s footwear to the domain name registrant.
(vii)	the registrant has ignored the Complainant’s reasonable request to voluntary cancel the Domain Name;
(viii)	the registrant has established no legitimate business under the Domain Name and the registration of the Domain Name causes detriment to the Complainant by diverting business from its own legitimate website.

Response

6.3	The Respondent contends that it bought the Domain Name is good faith since it combines the first name Kurt and the last name Keiger.  The last name Keiger is a well-known last name in many countries such as New York, West Virginia, Michigan and Canada.

6.4	The Domain was bought in order to provide genealogy information and has no relation to the Complainant’s trade mark.

Reply

6.5	In its Reply the Complainant disputes that:
(i)	the Domain Name was purchased in good faith and alleges that the Respondent is a typo squatter and owns some 245 domain names many of which include well known third party trade marks;
(ii)	Kurt Keiger is a well-known surname in North American countries asserts that no evidence has been submitted by the Respondent to support the Respondent’s claim;
(iii)	the Domain Name was bought in order to provide genealogy information as the Website is being used to promote footwear.

Further Submission

6.6	In its further submission the Complainant submits that the Website features the Complainant’s exact trade mark KURT GEIGER on its home page and provides links to a number of retailers of footwear.

7.	DISCUSSION AND FINDINGS

Rights

7.1.	Paragraph 2 of the Policy requires that the Complainant prove on the balance of probabilities that:

(i)	it has Rights in a name or mark that is identical or similar to the Domain Name; and

(ii)	the Domain Name, in the hands of the Respondent, is an Abusive Registration (as those capitalised terms are defined in paragraph 1 of the Policy).

7.2.	The Complainant has numerous United Kingdom and Community Trade Mark registrations for the mark KURT GEIGER.  The Complainant includes the words “Kurt Geiger” in its corporate name and uses the name “Kurt Geiger” in connection with its domain name <kurtgeiger.com>. Accordingly, the expert finds that the Complainant has Rights in the name or mark which (ignoring the suffix <.co.uk>) is similar to the Domain Name, as required to satisfy the requirements of paragraph 2 of the Policy.    

Abusive Registration

7.3.	Paragraph 1 of the Policy defines an Abusive Registration as a domain name which:
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 Complainants Rights;
ii	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights	

Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence of an Abusive Registration, the most relevant of which are those set out in paragraphs 3a i C; 3a ii; and 3a iii of the Policy. 

7.4.	It is clear from the evidence provided by the Complainant that it has built a substantial goodwill and reputation in the mark KURT GEIGER in connection with the sale of shoes and footwear. The Website not only features the Complainant’s exact trade mark KURT GEIGER but also provides links to other providers of footwear in competition with the Complainant. By using the Complainant’s trade mark on the Website and providing links to other suppliers of footwear in competition with the Complainant, it is clear that Respondent has intended to benefit from attracting additional traffic to the Website by those looking for the Complainant’s website.  The Domain Name has therefore been used in a manner that took advantage of and was unfairly detrimental to the Complainant’s Rights.  On the balance of probabilities, it appears that the Domain Names was registered primarily for the purpose of disrupting the business of the Complainant and the Expert finds that the requirements of 3 a i C of the Policy are satisfied.

7.5.	Whilst the Complainant has not provided any evidence that people have been confused into believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with the Complainant, there is clear potential for such confusion. The likelihood is that “the Respondent is using the Domain Name in a way which has confused people and businesses into believing that the Domain Name is registered to, or operated or authorised or otherwise connected with the Complainant” (DRS Policy 3a ii).

7.6.	Disregarding the <.co.uk> suffix, there is only one letter difference between the Domain Name and the Complainant’s trade mark KURT GEIGER. The Respondent appears to be engaged in typo-squatting and is using the Domain Name to trade off the goodwill and reputation that the Complainant has established in its registered mark KURT GEIGER. There has been a long line of cases where typo-squatting has been found to constitute Abusive Registration.  These cases include the Morgan Stanley group of cases (DRS 02959; DRS 02961; DRS 03054; and DRS 03189); endsligh.co.uk (DRS 02949) and carfonewharehouse.co.uk (DRS 02974).  

7.7.	The Complainant has provided a list of some 245 domain names registered to the Respondent which could be confused with well known brand names.  Many of 245 domain names registered by the Respondent have only one letter different from well known brand names. Many of these domain names were registered on the same day that the Respondent registered the Domain Name. The Respondent appears to be engaged in a pattern of registrations where the Respondent is the registrant of a domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern.  Accordingly, The Complainant has demonstrated that the requirements of paragraph 3a iii of the Policy are satisfied.    

7.8.	The Respondent’s contention is that it bought the Domain Name in a good faith because it combines the first name Kurt and the last name Keiger lacks creditability. The Respondent has provided no evidence to support its contentions.  The Website has the Complainant’s trade mark KURT GEIGER at the top right hand corner and provides links to other footwear providers’ sites in competition with the Complaint.  There is no evidence of any prior relationship between the Complainant and the Respondent and there appears to be no legitimate reason why the Respondent should be using the Complainant’s trade mark in connection with the website to which the Domain Name resolves. 

7.9.	Accordingly, the Expert finds that the Domain Name is an Abusive Registration and in particular that the requirements of paragraph 3a i C; 3a ii; and 3a iii have been satisfied.  

7.10.	The Complainant has requested that the Domain Name be cancelled. Cancelling the Damian Name registration may not provide the Complainant with the result that it intends.  It is therefore proposed to transfer the Domain Name to the Complainant.     

8.	DECISION

Having found that the Complainant has Rights in the name which is similar to the Domain Name and the Domain Name in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name be transferred to the Complainant.

……………………………………
VERONICA BAILEY
								10^th March 2006