Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2002/468.html
Cite as: [2002] DRS 468

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Nominet UK Dispute Resolution Service

DRS 00468

Truck 'n Trolley Ltd -v- Eastern Storage Equipment Ltd

Decision of Independent Expert

Parties:

Complainant: Truck 'n Trolley Ltd

Country: UK

Respondent: Eastern Storage Equipment Ltd

Country: UK
Domain Name:
truckandtrolley.co.uk ("the Domain Name")
Procedural Background:
The Complaint was lodged with Nominet on June 25, 2002. Nominet validated the Complaint and notified the Respondent on July 26, 2002. On August 15, 2002 the Respondent filed a response and Nominet forwarded a copy of the response the Complainant. On August 28, 2002 the Complainant filed a reply which was copied to the Respondent.

On September 17, 2002 Nominet informed the Complainant and the Respondent that it had not been possible to achieve a resolution of the dispute by Informal Mediation..

On September 25, 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On September 30, 2002 Andrew Goodman, 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.

On October 7, 2002 Andrew Goodman was appointed as the Expert.

Procedural Issues
There are, so far as I am aware, no live procedural issues raised by either party which have a bearing upon this decision.
The Facts
On March 16, 2002 the Domain Name was registered by Fasthosts for Business-Needs UK Ltd. As at the date of the Complaint the Domain Name operated to host a website which bore the homepage of the Respondent, also reached by use of the domain name ese.co.uk. This described the Respondent as "a well established, professional company based in Norwich, Norfolk. Specialising in the provision of all types of storage solutions such as static or mobile shelving, racking and binning, lockers, benches, materials handling trucks and trolleys, signage and containers for a wide variety of UK business requirements. As well as offering a large range of office, warehousing, stores and factory products." As at the date of this decision the site still operates in the same way. The Respondent is described as "Specialising in the provision of storage, handling and cloakroom solutions, including static or mobile shelving, racking, binning, lockers, benches, materials handling trucks, trolleys, signage and containers for a wide variety of business requirements. We also have available a 316+ page business mail order catalogue containing almost 10,000 of the 20,000 products we have available for your office, warehousing, stores and factory."

So far as I am aware the Respondent company has no obvious connection with the Complainant or its domain name, truckntrolley.co.uk, which was registered in June, 1998. However, by coincidence, the manufacturing arm of the Complainant is called ESE Engineering Ltd, and uses the domain name eseengineering.com. As I have said, the Respondent uses ese.co.uk.
Contentions of the Parties

Complainant:
The substance of the Complaint may be set out shortly as follows:

It is said by the Complainant (i) The Domain Name in dispute is identical or similar to a name or mark in which the Complainant has rights; (ii) in the hands of the Respondent it is an Abusive Registration, by which I take it to mean that the Respondent, being a direct commercial competitor, is using the Domain Name in a way which has confused people into believing the Domain Name is operated or authorised by or otherwise connected with the Claimant. In support of its complaint the Complainant has produced a print out of an exchange of e-mails in which one of its customers sent an e-mail to the Domain Name believing it to be that of the Complainant and the Respondent offered to quote for the business.

The Complainant requests that the Domain Name is transferred.
Respondent's Response:
The Response rejects the Complaint and the evidence supporting it and contends
1. there is no sufficient evidence that the Complainant has either significant goodwill or rights in the Domain Name or the name "Trucks'nTrolley".
2. There is no evidence that the registration is an Abusive Registration.
3. The Domain Name is generic or descriptive and the Respondent is making fair use of it.
In support of its contentions the Respondent says:
1. The Complainant is not well enough known in the industry to be afforded any special rights attaching to the Domain Name.
2. The Respondent before being informed of the dispute used the Domain Name in connection with the genuine offering of goods and services.
3. The words "truck and trolley" used alone or together are wholly descriptive of websites offering such products. In this regard the Respondent has produced a print out of a UK Yahoo search for the string "truck and trolley" and a search of the UK Trade Mark Registry records for class 12 trademarks beginning with either "truck"or "truk" . The Respondent contends that it is using the Domain Name fairly as a descriptive or generic expression to describe the goods which are sold from the site.
4. The limited evidence available to the Complainant suggests that the Respondent is not an abusive registrant.
The Respondent asserts that the complaint is an attempt at a reverse domain name hijack, and in addition to the dismissal of the complaint seeks confirmation of its entitlement to the Domain Name.
Complainant's Reply:
By its Reply to the Response the Claimant, in support of its assertion that it has goodwill in the market place, produces its certificate of incorporation dated October, 1991, advertising copy in Yellow Pages / Yell 1994-2001, Industrial Exchange & Mart, its advertising lists 1998 and 2001, and refers to its trade fair exhibitions. The Claimant reiterates that its complaint is founded on the fact that the Respondent is using an almost identical domain name in direct competition to the Complainant and that it attempted to take business from a customer of the Complainant who was confused by the similarity in domain name.
Discussion and Findings:

General
1. The complaint is founded on an allegation of abusive registration. Under the Nominet Dispute Resolution Service Policy an abusive registration is defined as
  
  "a Domain Name which
  1. has been used in a manner which took unfair advantage or was unfairly detrimental to the Complainant's Rights."
  For the purpose of this definition "Rights" includes but is not limited to rights enforceable under English law. However a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.
2. Part 3 of the Nominet Dispute Resolution Service Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. I set out the relevant sections as follows:
  1. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
    
    C: primarily for the purpose of unfairly disrupting the business of the Complainant
  2. Circumstances indicating that the Respondent is using the Domain name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
3. Part 4 of the Nominet Dispute Resolution Service Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. I set out the relevant sections as follows:
  1. Before being informed of the Complainant's dispute, the Respondent has
    1. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods and services;
    2. made legitimate non-commercial or fair use of the Domain Name; or
  2. The Domain Name is generic or descriptive and the Respondent is making fair use of it.
  Complainant's Rights
4. To succeed on this complaint the Complainant has to prove pursuant to paragraph 2 of the Policy that, on the balance of probabilities, first that it has rights as defined in paragraph 1 of the Policy in respect of a name 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.
5. The Domain Name is "truckandtrolley.co.uk". The Complainant trades as Truck 'n Trolley Ltd and has done so since 1991; it has operated the domain names "truckntrolley.com" and "truckntrolley.co.uk" since 1998. Notwithstanding the submissions of the Respondent I consider it reasonable to infer that the Complainant has goodwill associated with that name sufficient to seek the protection of the court from passing-off. The name in that form is not generic or descriptive of the Complainant's business.
6. Accordingly I find that the Complainant has rights in respect of a name which is similar to the Domain Name.
  
  Abusive Registration
7. I have considered the use made of the Domain Name by the Respondent. While I accept and take into account the fact that the Respondent used the Domain Name in connection with a genuine offering of goods and services prior to intimation of the complaint, I also note that the Respondent made no independent use of the Domain Name itself, but merely linked it directly to ese.co.uk. I do not accept that customers trying to locate the business of the Respondent would have searched by use of the Domain Name. There is no evidence that the Respondent advertised its business by independent use of the Domain Name. By contrast I consider it reasonable to infer that members of the public who searched the web by use of the Domain Name expected to find a site either connected with the Complainant's business, or at least a business primarily concerned with the supply of trucks and trolleys for manual handling and not specifically connected with the Respondent's business which appears from its website to be of far more general application. In support of that view I am struck by the generalised nature of a business that advertises 20,000 products and appears to offer no degree of specialisation to connect it with the words "truck and trolley".
8. I accept that the words "truck and trolley" are descriptive in that form and probably generic. However, notwithstanding the limited evidence available I find it probative of the assertion that the Respondent was attempting by use of the Domain name, which was readily to be confused with that of the Complainant, to capitalise upon the goodwill attaching to the Complainant's name and reputation. To that extent I am content that the evidence contained in the e-mail records produced by the Complainant amounts to circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. The fact that the Respondent indicated to the customer that it was not the Complainant does not detract from the fact that by then the confusion had occurred. It is undoubtedly the case that the Respondent then sought to capitalise on the confusion by offering competition for business originally destined for the Complainant.
9. There is no evidence that the Respondent has been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name. I have concluded that if the Domain Name comprises words which are generic or descriptive, they are not descriptive of the Respondent's business as a whole, since, on the evidence available to me, they relate to only a small proportion of the Respondent's business.
10. If I am wrong in respect of the preceding paragraph, I find that the conduct of the Respondent, particularly having regard to the e-mail of 7th May 2002 amounted to an Abusive Registration under the second limb of the definition of that term in the Nominet Dispute Resolution Service Policy, namely that the Domain Name has been used by the Respondent in a manner which took unfair advantage or was unfairly detrimental to the Complainant's Rights.
11. Accordingly I find that the Domain Name in the hands of the Respondent is an Abusive Registration as defined in paragraph 1 of the Policy.
Decision
I have found that
1. the Complainant has rights in respect of a name or mark which is similar to the Domain Name and
2. the Domain Name in the hands of the Respondent is an Abusive Registration.
However I also have found that the words "truck and trolley" are descriptive in that form and probably generic. On that basis I am unwilling to accede to the Complainant's application for the Domain Name to be transferred to it. I therefore direct only that the registration of the Domain Name, "truckandtrolley.co.uk" in the name of the Respondent be cancelled.

Andrew Goodman

Date: 15 October 2002