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URL: http://www.bailii.org/uk/cases/DRS/2002/663.html
Cite as: [2002] DRS 663

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VILLEROY & BOCH AG
- v -
DESIGNER BATHROOMS LIMITED

DRS 00663

Decision of Independent Expert

1. Parties
Complainant: Villeroy & Boch AG

Country: Germany

Respondent:  Designer Bathrooms Limited
Country:      United Kingdom

2. Disputed Domain Names

villeroyboch.co.uk;
ucosan.co.uk

3. Procedural Background:
The Complaint was lodged with Nominet UK (“Nominet”) by e-mail on October 18, 2002 and a hard copy of the Complaint was received by Nominet on October 23, 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on October 23, 2002, giving him 15 working days within which to lodge a Response. A Response was filed which was dated October 24, 2002 but which was not received by Nominet until November 13, 2002. It was forwarded to the Complainant on the same day. A Reply to the Response was received from the Complainant by e-mail on November 15, 2002 and a hard copy was received on November 18, 2002 and sent to the Respondent. Nominet initiated its Informal Mediation procedure on November 18, 2002 but it would seem that an acceptable resolution through mediation was not achieved, for on December 6, 2002 the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).

On December 11, 2002 the undersigned, Mr. David H Tatham (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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. He was subsequently selected by Nominet as the Expert for this case.

4. Outstanding Formal/Procedural Issues (if any)
The letter from Nominet appointing the Expert states that only the initial complaint has been checked for validity and that it is up to the Expert to decide on how much weight should be given to any non-compliant or incomplete submissions. Nominet’s published Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”) refers only to a Complaint (paragraph 3), a response to which must be filed within 15 working days (paragraph 5), and a reply by the Complainant which must be filed within 5 working days (paragraph 6).

In this case, all the documents were filed within the time allowed. The Complainant refers to paragraphs 5(c)(v) and (vi) of the DRS Procedure and alleges that the Respondent’s Response does not comply with them. These paragraphs are purely procedural and since the Respondent, unlike the Complainant, has not had the benefit of a law firm to act on its behalf, the Expert has concluded that it would be inequitable to reject the Complaint just because it does not contain certain wording, or because the Respondent only offers to supply documentation and does not do so. He has therefore decided that he will take all the submitted documents into account in this Decision.

5. The Facts
The Complainant

The Complainant was first established in 1748. It has been trading under the name Villeroy & Boch since 1836 and in the UK for many years. It was converted to a public limited company in 1987 and started trading on the Stock Exchange in 1990. The Complainant (together with its associated companies and subsidiaries) manufactures, develops and markets tiles, bathrooms, kitchens and tableware. It is a world famous company trading in around 125 countries with global sales of Euro 975.2 million and European (including UK) sales of Euro 864.5 million in 2001.

In 1989, the Complainant acquired a 50% stake in Ucosan B.V. ("Ucosan"), the Dutch specialist for bathtubs, showers and whirlpool systems, and it took over the company completely in 1999. Ucosan's global turnover in 2001 was around Euro 35 million, including approximately Euro 2.5 million in the UK, where Ucosan products have been sold for several years.

The Complainant owns a substantial number of Villeroy & Boch and (through Ucosan) Ucosan registered trade marks in many countries throughout the world. In particular, the Complainant is the proprietor of six UK, Community and International Registrations of trade marks consisting of or containing the words Villeroy & Boch marks. There are also two UK registrations for UCOSAN, and copies of all of these marks were attached to the Complaint The Villeroy & Boch and UCOSAN marks are registered and used in relation to a wide range of bathroom products, including: bath tubs, mirrors and furniture for bathrooms, showers, shower fittings, toilet bowls, toilet paper holders, towel holders, wall-mounted soap dishes, wash-hand basins and whirlpool systems.

In addition, the Complainant owns the following eight domain names all of which connect to the Complainant's main Villeroy & Boch website, a copy of which was attached to the Complaint –

villeroy-boch.com  villeroy-y-boch.com
villeroy-boch.de  villeroyeboch.com
villeroyenboch.com  villeroy-e-boch.com
villeroy-en-boch.com  villeroy-und-boch.de

The Complainant's use of the Villeroy & Boch marks predates the Respondent's registration of the Domain Names on March 22, 2000 by over 150 years. In addition, apart from the extension of the International Registration into the UK, and the Community trade mark, all of the Complainant's registered trade marks were registered between one to sixteen years before the contested Domain Names.

The Complainant (through Ucosan) first complained to the Respondent about the domain name ucosan.co.uk on October 12, 2000. The Respondent undertook a number of times between around October and December 2000 that it would remove the www.ucosan.co.uk website from the Internet but subsequently failed to do so in breach of its undertakings. The Complainant then sent a cease and desist letter to the Respondent on 22 March 2001 relating to the Domain Names. Following the Respondent's failure to respond, the Complainant filed a complaint under Nominet’s ‘old’ Dispute Resolution Service on June 26, 2001. On September 19, 2001, Nominet informed the parties that it had decided not to take any action. Copies of the relevant correspondence were attached to the Complaint.

According to the Complainant, the Respondent is, and has been for around twelve years, an authorised dealer of Villeroy & Boch products in the UK. There are thousands of Villeroy & Boch authorised dealers worldwide and around 240 for sanitary products in the UK. The Respondent's only legitimate connection with the Villeroy & Boch mark is that it is authorised to sell the Complainant's Villeroy & Boch products. It is not an associated company or subsidiary of the Complainant. The Respondent is not an authorised dealer of Ucosan products and does not supply such products through its website.

The Respondent
The Respondent has not provided a description of itself or of its trading activities. However according to a copy of its website at www.Designer-Bathrooms.com which was attached to the Complaint, and which was subsequently confirmed by the Expert as being an accurate copy, the Respondent is a supplier of: bathroom suites, sanitary ware, shower cubicles, and the like.

Both of the disputed Domain Names were registered on March 22, 2000 and, according to the copy of the relevant pages which were supplied to the Expert as part of the papers provided by Nominet, currently they both dissolve to the Respondent’s website.

6. The Parties’ Contentions

The Complainant
The Complainant asserts that the domain names are identical to those in which it has rights and alleges that the registration is an abusive registration.

The Complainant further contends as follows:

The Respondent is not commonly known by the names Villeroy & Boch or Ucosan and would be prohibited by the Complainant from trading under those names. Nor is the Respondent authorised to register the Complainant's marks as a trade mark, domain name, company name or otherwise.

The Respondent registered the Domain Names on 22 March 2000 without the Complainant's consent. By incorporating the Complainant's trade marks completely and without any distinguishing or other added matter, the Domain Names misrepresent that they are registered, operated or authorised by, or otherwise connected with the Complainant – i.e. that the Respondent is the Complainant or the official or the only Villeroy & Boch and Ucosan dealer in the UK, that there is something approved or official about the website to which the Domain Names are connected, or that the Respondent has a special relationship with the Complainant over and above that of a mere authorised dealer.

As a result of its relationship with the Complainant and common knowledge, the Respondent was well aware of the Complainant's rights in the trade marks Villeroy & Boch and UCOSAN when it registered the Domain Names. If not, then trade mark and domain name searches would have disclosed the Complainant's prior rights.

As a result of the Complainant's extensive use and marketing of the Villeroy & Boch and UCOSAN trade marks for many years, the Complainant has acquired a substantial reputation and goodwill both worldwide and in the UK in the marks. In the UK in particular the marks are protected under the UK common law against passing off.

The trade marks Villeroy & Boch and UCOSAN are (either inherently or as a result of extensive use by the Complainant) distinctive of the Complainant and are not generic or descriptive. The Villeroy & Boch trade mark is identical to the domain name villeroyboch.co.uk. In this regard, the sub-domain .co.uk and the absence of the ampersand in the domain name, which does nothing to distinguish the domain name from the mark and cannot in any event be included in a domain name, should be disregarded. Disregarding the sub-domain .co.uk, the UCOSAN mark is also identical to the domain name ucosan.co.uk. Alternatively, the marks and the contested domain names are similar.

According to the Complaint, the contested domain name <villeroyboch.co.uk> connects to a homepage featuring the famous "Villeroy & Boch 1748" logo followed by the words: "UK Dealer Locator Coming Soon. To advertise call 0870 2009 888. Click here For Villeroy & Boch bathroom products". No other information is provided. The Complainant has not approved this homepage, which misrepresents that it relates to an official or approved Villeroy & Boch dealer locator website. Again according to the Complaint, the contested domain name <ucosan.co.uk> connects to a website which states: "Sorry. An Error occurred while processing your request. Could not load Store Configuration settings. The Store Admin has been notified. Please check back soon." There is nothing to indicate that these websites – whose messages the Complainant alleges are detrimental to the Complainant's business and reputation – are not official or approved websites.

Copies of these pages were attached to the Complaint but, as noted above, both websites currently connect to the Respondent's "Designer-Bathrooms.com" website. In connection with this site, the Complainant submits that, apart from the phone number at the top of the website, no contact details are provided and there is no explanation or disclaimer regarding the Respondent's identity or relationship with the Complainant.

Furthermore, the name "Designer-Bathrooms.com" is descriptive of both parties' businesses and does not indicate that the Respondent is not the Complainant or one of its subsidiaries. The words "The best bathroom equipment at the lowest prices!" appearing under the name "Designer-Bathrooms.com" are in small, faint print. The Respondent supplies bathroom products under the third party brands that are listed at the top of the "Designer-Bathrooms.com" homepage (e.g. "Sonia Accessories", "Huppe" etc.). These products are identical to the Complainant's products. The website does not refer anywhere to the Villeroy & Boch or Ucosan brands. It is not clear from the site that Villeroy & Boch is only one of the brands supplied by the Respondent, and that the third party brands are not sub-brands of the Complainant. The Complainant contends that the public is therefore likely to be misled into believing that the third party products are the Complainant's products.

Furthermore, a search by the Complainant on September 10, 2002 for "Villeroy & Boch" using the site's search facility disclosed 12 pages of products, some of which, such as towel warmers, are not in fact Villeroy & Boch products. Conversely, some of the genuine Villeroy & Boch products disclosed were incorrectly stated to be "Showerlux" products – a brand of one of the Complainant's competitors. A search on the same day for "Ucosan" did not disclose any results. The Complainant has never approved the content of the Respondent's website which, on the basis of the above description, misrepresents that it is an official or approved site.

The Complainant argues that the Respondent is using the Domain Names in a way which has confused the public into believing that the Domain Names are registered to, operated by, or otherwise connected with the Complainant. Alternatively, such confusion is very likely to occur, and the Complainant refers to the Decision in DRS 00248,

The Complainant argues that the contested domain names make, or are liable to be perceived as making, the representation that there is something approved or official about the Respondent's website, or that the Respondent is a favoured or the only authorised dealer in the UK. Such an appropriation of the Complainant's trading style by a mere agent of the Complainant constitutes unfair advantage being taken by the Respondent or unfair detriment caused to the Complainant. In this context, the Complainant refers to the fact that it has been held in many previous DRS cases that the fact that no confusion may arise in practice once users access the Respondent's website is irrelevant in circumstances where the Domain Names are inherently misleading. By the time the website is accessed, the Respondent will have achieved a business opportunity that it would not otherwise have had.

In conclusion, the Complainant submits that the above matters demonstrate that the contested Domain Names were registered or have been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights, in particular on the basis of paragraph 3.a.i.A of the Policy, or that the Respondent has registered the Domain Names as a blocking registration (paragraph 3.a.i.B of the Policy ), or that the Respondent has registered the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3.a.i.c of the Policy).

The Response
In a short Response, the Respondent seeks to rely upon Nominet’s earlier decision, under the ‘old’ Dispute Resolution Service, that it was entitled to retain the contested domain names. The Respondent also alleges that the Complainant has upset its trade because out of the blue its authorized dealership with the Complainant was terminated after twelve years of retailing Villeroy & Boch bathrooms and tiles. The reason given was poor sales performance and the Respondent alleges that this was sharp business practice, although it has not affected its sales as all of its Villeroy & Boch products are now purchased from another source. The Respondent offered to supply the Expert with documentary evidence of the termination.

The Respondent states that the two contested domain names were purchased in order to sell bathroom products over the internet. It has sold Villeroy & Boch and the Ucosan product range nationwide through its showroom for over twelve years as an authorised dealer, and it has a large range of Villeroy and Boch pottery and tiles, along with baths, furniture, and product display signs, including a large illuminated sign in the window of the showroom. The Respondent offered to supply the Expert with photographic evidence of this.

The Respondent states that it has never tried to confuse any internet user into thinking that it is either Villeroy & Boch or Ucosan, or that it has ever tried to pass off as any other company. The contested domain names were purchased in order to boost its sales. It has always tried to promote the products, as it does with the logos and illuminated signs in its showroom window which were supplied by Villeroy & Boch, and which show the general public that the Respondent sells the Villeroy & Boch products. This does not mean that the Respondent is trying to trade under the Complainant’s well established name or that anyone could possibly be confused into thinking that this was the case. The Respondent claims to have a genuine interest in both names and has never tried to sell them for profit or used them in any untoward manor. It also alleges that it has an entitlement to both names as they are both displayed in its showroom and that when the contested domain names were registered, they were of no interest to Vileroy & Boch or Ucosan.

Finally, the Respondent alleges that since villeroyboch is not a copyrighted name, and that it could buy villeroyboch Ltd as a new trading name if so desired.

The Reply
The Complainant filed a Reply to the Response, of which the following are the salient points –

· Nominet's decision of 19 September 2001 was reached under the Rules of the ‘old’ DRS, and the current Complaint is made under the new Rules. Therefore the earlier Decision has no binding or persuasive effect on this case and is completely irrelevant.
· The Complainant confirms that its Agreement with the Respondent was terminated on 20 February 2002 and that the Respondent is therefore no longer an authorised dealer of Villeroy & Boch products. The Respondent cannot therefore claim to have a legitimate connection with the Villeroy & Boch mark on the basis of the Agreement, which has now been terminated, and this amounts to further evidence that the Domain Names are Abusive Registrations. The Respondent’s claim that the Complainant's termination of the Agreement was motivated by "sharp business practice" is strongly denied by the Complainants, and even if the Agreement was terminated in bad faith (which is also denied), this does not assist the Respondent on the basis of the matters set out in the Complaint.
· The Complainant objects to the Respondent’s conduct in purchasing all of its Villeroy & Boch products from another distributor, and reserves all its rights against the Respondent in this respect. The Complainant submits that this disingenuous conduct amounts to further evidence of the Respondent's abuse of the Complainant's Rights.
· The Complainant denies the Respondent’s claim that it has sold Ucosan products for over twelve years as an authorised dealer as the Respondent has never been an official authorised dealer of Ucosan products.
· The Complainant submits that the Respondent’s admission that it purchased the Domain Names in order to boost its sales amounts to additional evidence that the Domain Names are Abusive Registrations.
· Although the Respondent seeks to rely on his belief that "villeroyboch" is not a "copyrighted name, the Complainant contends that there is no system for "copyrighting" names under English law and the Complainant is unclear as to what the Respondent is referring. The Complainant has clearly established in the Complaint that it has rights in the name "villeroyboch".
· The Respondent's claim that it could buy villeroyboch Ltd as a new trading name is of no relevance. Indeed, the Complainant would strongly object to any such action by the Respondent – which would amount to a further infringement of the Complainant's trade mark rights.
· The Complainant submits that, contrary to the Respondent's claim that the Domain Names "were of no interest to Villeroy & Boch or Ucosan", the Complaint clearly demonstrates that the Complainant has a substantial interests in the names.
· Finally, the Complainant submits that the response does not comply with paragraphs 5(c)(v) and (vi) of the DRS Procedure.

7. Discussion and Findings

General

According to paragraph 2 of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities -

i   the Complainant has Rights in respect of a name or mark which is identical or similar
    to the disputed domain name; and
ii the disputed domain name, in the hands of the Respondent is an Abusive
      Registration.

Complainant’s Rights
There is no doubt that one of the disputed domain names, <villeroyboch.co.uk> is virtually identical to the name Villeroy & Boch. It is customary in domain name disputes to disregard both the suffix ‘.co.uk’ as having no relevant significance and because it is generic, as well as an insignificant piece of punctuation such as an ampersand. In any case, an ampersand cannot form part of any domain name. The Complainant has established, to the satisfaction of the Expert, that it has very long-standing and substantial rights in the name Villeroy & Boch whether as a trade mark, as a company name, or as a domain name, all of which are rights that are enforceable under English law.

There is also no doubt that the other contested domain name <ucosan.co.uk> is identical to the trade mark UCOSAN. However the evidence shows that the Complainant does not own the corresponding trade mark registration of UCOSAN. This is owned by Ucosan B.V. a company incorporated in the Netherlands. However Ucosan B.V. is a wholly owned subsidiary of the Complainant and the Expert believes that the Policy could be interpreted as permitting a parent company to make a Complaint on behalf also of its wholly owned subsidiaries.

Consequently the Expert is satisfied that the Complainant has established the first leg of paragraph 2 of the Policy, namely that it has Rights in respect of a names or marks which are identical or similar to the contested domain name

Abusive Registration
An ‘abusive registration’ is defined in paragraph 1 of the Policy as being “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 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.” In paragraph 3(a) of the Policy there is a non-exhaustive list of factors which may be evidence of an Abusive Registration

As there is no indication that the Respondent has ever attempted to sell the disputed domain name, paragraph 3(a)(i)A is not applicable, and indeed the Complainant does not make this claim. However paragraphs 3(a)(i)B and C – both of which are specifically referred to in the Complaint – would appear to be pertinent in this case. These paragraphs state that the Respondent has “registered or otherwise acquired the Domain Name …… B as a blocking registration against a name or mark in which the Complainant has Rights; or C primarily for the purpose of unfairly disrupting the business of the Complainant.”

Paragraphs 3(a)(ii), (iii), (iv) or (b) are not claimed by the Complainant and in any case do not apply in this case.

The Complainant refers to, and provides a copy of. the Decision by an Appeal Panel in the DRS case 00248 Seiko UK Limited v. Designer Time/Wanderweb (“the Seiko Decision”). Indeed the facts in this case are very similar to the facts in that case in that the Respondent has registered domain names which completely incorporate the Complainant’s names and alleges that he has done so as an authorised supplier of the Complainant and merely in order to maximise his sales of the Complainant’s goods. However every case must be decided on its own merits and, as was said in the Seiko Decision, “Until such time as the UK courts come to construe the provisions of the DRS, no authority will be binding upon an Expert.”

The Expert inclines to the view, expressed by the Panel in that case, that this also applies to DRS Decisions, and to Decisions relating to trade marks by the ECJ which seek to interpret the First Council Directive to approximate the laws of the member states relating to trade marks No. 89/104/EEC of 21 December, 1988 – a Directive upon which the UK Trade Marks Act of 1994 is based. However all pertinent Decisions can of course be used to guide an Expert in his Decision, and the Expert is conscious of paragraph 16(a) of the DRS Procedure which states that an Expert “will decide a complaint on the basis of the Parties’ submissions, the Policy and the procedure”.

What has to be decided in this case is whether or not the registration and use of a domain name incorporating a supplier’s trade mark by a legitimate trader in that supplier’s goods, but without the approval of that supplier, takes unfair advantage of the Complainant supplier’s earlier Rights.

Essentially the complaint is that the Respondent’s registration of the contested domain names has gone beyond making the representation “we sell Villeroy & Boch or Ucosan products” and is instead making the representations of either “we are The Villeroy & Boch or Ucosan supplier” or “we are the official UK supplier of Villeroy & Boch or Ucosan goods”. These two latter forms of representation are probably what the European Court of Justice was referring to in its case C-63/97 BMW v. Deenik, a copy of which was attached to the Complaint, when it speaks of creating “the impression that there is a commercial connection between the other undertaking and the trade mark proprietor”.

The Respondent argues in its response – which bears a striking resemblance to its Response in the earlier dispute between the parties – that it has never tried to confuse anyone into thinking that it is either Villeroy & Boch or Ucosan, and that it has never tried to pass itself off as any other company. The contested domain names were purchased solely in order to boost its sales and it likens them to the product display signs in its showroom window.

But in the opinion of the Expert this is belied by the fact that both of the contested domain names dissolve to the Respondent’s own website which contains not a single mention of either Villeroy & Boch or Ucosan. Nor is there any evidence that the Respondent has ever sold any of the Complainant’s products as a result of its ownership of the contested domain names. Indeed the evidence would seem to point towards them being used to promote (and presumably sell) other products, as the only brand names listed in the heading to the Home Page of the Respondent’s website are: Sonia, Myson, Huppe, Harold Moore, Showerlux, and Victory.

The Respondent also asserts that it is entitled to use both names because it is an authorised dealer for Villeroy & Boch and Ucosan products and because it displays the names in its showroom. No copy of the Agreement by which the Respondent was appointed a dealer for Villeroy & Boch was filed with the Complaint, but the Expert doubts very much whether it grants the Respondent the right to register the names of the Complainant and its Dutch subsidiary as domain names. In any case, the Respondent has never been an authorised dealer for Ucosan’s products. Furthermore, the Respondent has confirmed that the signs in its showroom were supplied by the Complainant so they cannot grant him the right which he says he is entitled to. Also, as his dealership is now terminated, presumably the signs will now be re-possessed.

That it is unfair for a mere agent to appropriate to himself the trading style of his principal is a well-established principle of UK and international law. Section 60 of the UK Trade Marks Act 1994, importing into UK law Article 6 septies of the Paris Convention, allows for the refusal of a trade mark application that has been applied for by an agent or representative, if the rightful proprietor of the mark opposes the application.

The Expert consequently finds the Complaint proved, but for the sake of completeness, will now deal with several other outstanding points.

Firstly, the Expert confirms that in his opinion the previous Complaint, which found in favour of the Respondent is not relevant to this present Complaint even though it involved identical facts. It was brought under Nominet’s previous DRS Policy which was replaced in September 2001 by the present Policy and Procedure and it operated under entirely different rules.

The Expert also agrees with the Complainant that any attempt to register Villeroyboch Limited as a company name would, eventually, founder. Even if Companies House were to accept it in the light of the two similar names already registered by subsidiaries of the Complainant, any use of the name would probably amount to passing off or trade mark infringement, which extends to names that are confusingly similar as well as those which are identical. There is, as the Complainant points out, no possibility in the United Kingdom of obtaining a copyright registration.

The Respondent has denied that the disputed domain name is a blocking registration or was registered primarily for the purpose of unfairly disrupting the complainant’s business. However clearly the existence of the disputed domain name in the hands of the Respondent who, although he may have believed he had some rights to it, in fact does not, serves to prevent (i.e. block) the Complainant from using it as a domain name.

8. Decision
The Expert finds that the Complainant has Rights in the names ‘Villeroy & Boch’ and ‘Ucosan’ and that these names are identical or similar to the contested domain names.

The Expert further finds that, on the balance of probabilities, the contested domain names are Abusive Registrations in the hands of the Respondent.

The Expert therefore directs that the contested domain names <villeroyboch.co.uk> and <ucosan.co.uk> be transferred to the Complainant.

David H Tatham

December 20, 2002