1082
USED TACKLE LIMITED
= v =
BADGER INTERNATIONAL LIMITED
Nominet UK Dispute Resolution Service
DRS 1082
Decision of Independent Expert
1. Parties:
Complainant: Used Tackle
(a partnership comprising Mr and Mrs Roger Surgay)
Country: Great Britain
Respondent: Badger International Limited
Country: Great Britain
2. Disputed Domain Name
dragoncarp.co.uk
This domain name is referred to below as the "Domain Name".
3. Procedural Background
The Complaint was lodged with Nominet on 25 June 2003. Nominet validated the Complaint and notified the Respondent on 1 July 2003 and informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 14 August 2003 (the deadline for receipt having been extended by Nominet as a result of non-receipt of the Complainant’s original cheque) the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).
Sallie Spilsbury, the undersigned (“the Expert”) has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
On reviewing the Complaint and its Annexes the Expert required clarification of certain issues and made a Request for Further Information from the Complainant. The Complainant provided the further information by letter dated 1 September 2003. The Respondent was given 5 days to respond to the additional information. No response was received from the Respondent.
4. Formal/procedural issues
Under Paragraph 5a of the Dispute Resolution Service (“the Procedure”) the Respondent was required to submit a Response to the Complaint to Nominet by 23 July 2003. The Respondent has failed to do so.
Paragraph 15b of the Procedure provides as follows:
If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
Are there exceptional circumstances which would suggest that it is not appropriate to proceed to a Decision?
It is the view of the Expert that there are no exceptional circumstances. The Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.
The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties’ submissions (which consists of the Complaint and its Annexes and its response to the Expert’s Request for Further Information in this case) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent’s non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure).
5. The facts
The Complainant
The Complainant is a partnership consisting of Mr Roger Surgay and his wife (details for Mr Surgay’s wife have not been provided). The Complainant is involved in all aspects of the supply of fishing and angling equipment and products to consumers through mail order and over the counter. This business has operated for 7-8 years, initially Mr Surgay traded as a sole trader using the business name Used Tackle. In 2001 he formed a partnership with his wife under the same name. The Complainant has developed its own branding called “Dragon Carp”(details of its use of the branding are set out below insofar as they have been provided). In the Complaint, the Complainant states that as a recognised supplier within the angling equipment market for the past 7-8 years (as sole trader and subsequently as a partnership), it has gained a good business reputation with its clients and that “Market sources place Used Tackle [the Complainant] and the Dragon Carp product range at number three or four with the UK retail market”. There is no supporting evidence before the Expert in relation to this statement.
The “Managing Director” and partner of the Complainant, Roger Surgay, is the proprietor of a registered trade mark featuring the Dragon Carp mark. The mark was registered at the UK Trade Mark Registry with registration number 2263620 on 12 September 2001. The registration covers sporting goods in class 28 of the register. It is a device mark which consists of the words “Dragon Carp” together with a drawing of a dragon. The proprietor claims the colours red, white and black as an element of the mark. There does not appear to be a disclaimer in respect of the registration. The Complaint states that the trade mark has been used by the Complainant (i.e. by the business which traded under the Dragon Carp initially as a sole trader and then as a partnership) “for the past 3-4 years including pre-registration”.
The Respondent
The Respondent was incorporated on 12 May 2000 under company registration number 03991477. The Complainant states that the Respondent is a competitor of the Complainant within the fishing and angling market. A search at Companies House shows only that the Respondent is engaged in “non-store retail sale”.
The Domain Name
The Respondent registered the Domain Name through its ISP on 13 March 2001. Until recently the registration appears to have been inactive.
The Complainant did not become aware of this registration until May 2003. Mr Surgay of the Complainant learned of the registration at a National Angling Exhibition when a director of the Respondent, Brin Hillsley*, approached him. In the Complaint it is asserted that Mr Surgay stated that Mr Hillsley had “come to gloat that Badger had registered as a domain name “Dragon Carp” and that there was nothing that Mr Surgay could do about it”.
* A search at Companies House shows a director of the Respondent named Brynley Ilsley.
About a week after the exhibition in May 2003 Mr Surgay investigated matters further. On his initial use of the Domain Name the Complaint states that Mr Surgay was taken to a website which loaded up all of the Respondent’s products. The Complaint suggests that there was a link from the Domain Name to the Respondent’s website. The Complaint states that “the website was clearly selling his [Mr Surgay’s] competitors products, despite the fact that he had typed in dragoncarp.co.uk”.
More recently, and for reasons which are not explained, the Respondent has removed the link from the Domain Name to the Respondent’s website. When the Domain Name is used the user now simply sees a blank page with no message or forwarding link. A printout of the website at the Domain Name as at 1 July 2003 is before the Expert confirming this position.
6. The Parties’ contentions
Complainant
The Complainant contends that it has rights in respect of a name or mark which is similar to the Domain Name. In support of this claim it relies on the trade mark registration owned by Mr Surgay and it also cites the success of the Complainant’s business under the Dragon Carp mark as having generated a valuable business reputation.
The Complainant also alleges that the Domain Name in the hands of the Respondent is an Abusive Registration under the terms of the Policy. The Complainant asserts that the registration was abusive for the following reasons:
· Customers entering the website at www.dragoncarp.co.uk did so in the belief that the product they were viewing was that supplied by the Complainant. The Complaint states that:
It is argued that use of the domain in this way is being used in such a manner as to confuse people into believing that the Domain Name is registered to, or being operated by or connected with the business activities of Complaint. To this end the complaint reports that on at least two occasions in the weeks that followed, customers had come into the Complainants shop and stated that they had entered the respondents website through the dragon carp domain name. The customer’s initial reaction had been one of confusion since they honestly believed that the dragoncarp.co.uk could only be associated to the products sold by the compliant”. It is evident that for at least a period of a few weeks the respondent used the domain name in such manner as to take unfair advantage of the complaints rights, what is more difficult to ascertain at this stage is how detrimental use of the domain name has been to the complaints ongoing business operations” [Note spelling and punctuation is reproduced as set out in the Complaint].
· Alternatively it is argued that the Respondent secured the Domain Name as a blocking registration. The Complainant asserts that
The complainant would like an explanation from the respondent as to why and what were the respondent intentions in registering the domain name?…. It is argued that the respondent having been trading for less of a period has registered the domain in a blatant attempt to prevent the complaint for having access to a domain in which he has other IP rights. This is supported by the respondents most recent action of removing the hyperlink from the dragon carp domain to the respondents “Badger international” website, to the effect that now if consumers type in the domain name a blank page is entered up with no message or forwarding link. This once again, leaves the consumer confused, and leaves the compliant in a position of not being able to guide consumers to his own future site, and exposing the complainant to an unfair business advantage, and future loss earnings. [Note spelling and punctuation is reproduced as set out in the Complaint].
Respondent
The Respondent has made no submissions.
7. Discussion and findings
Clause 2 of the Policy provides that a Complainant must prove that:
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii ) The Domain Name, in the hands of the Respondent, is an Abusive Registration.
The onus of proving both of the above elements is borne by the Complainant who must prove them on the balance of probabilities (Clause 2b of the Policy).
The term “Rights” is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant’s business.
Abusive Registration is defined in Clause 1 of the Policy to mean;
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 unfair 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.
The first criterion under clause 2 of the Policy- the Complainant’s Rights
Goodwill acquired through use
The Complainant states in the Complaint that it has traded for 7-8 years and that it has used the Dragon Carp mark for 3-4 years. There is a bare statement that unidentified “market sources” place the Dragon Carp product range at number three or four in the UK retail market. If this statement were supported by corroborating evidence the Expert would have no difficulty in finding that the use of the Dragon Carp mark by the Complainant had given rise to protectable goodwill. However a bare assertion of this information without any detail about the way in which the Complainant has marketed and used the mark in the UK, does not amount to proof of ownership of goodwill on the balance of probabilities. Accordingly the Expert is unable to make a finding about the existence or extent of the goodwill that has been generated by the Complainant’s use of the Dragon Carp mark to date.
For the avoidance of doubt the Expert wishes to make it clear that this finding is based solely on a lack of supporting evidence regarding the use that the Complainant has made of the Dragon Carp mark.
The trade mark registration
The proprietor of the trade mark registration is one of the partners in the Complainant partnership, Roger Surgay. The trade mark is used by the partnership. The rights inherent in the trade mark registration belong as a matter of law to Mr Surgay rather than the partnership. This leaves open the question whether the Complainant partnership has “Rights” under the Policy. There is no evidence before the Expert that the trade mark is a partnership asset nor is there evidence of a licence agreement between Mr Surgay and his fellow partner.
The definition of “Rights” in the Policy states that for the purposes of the Policy “Rights” are not limited to rights which are enforceable under English law. The Complaint states that the partnership has used the trade mark for 3-4 years. Although as a matter of English law, use of a trade mark is not itself sufficient to give rise to registered trade mark rights enforceable at law, it would be overly technical not to recognise that the partnership would have acquired an interest in the trade mark registration arising through legitimate trade mark use. That interest would extend to a concern to safeguard the integrity and exclusivity of the trade mark and to protect the Complainant’s market position from damage if these aspects of the mark were jeopardised. The Expert is prepared to find that such an interest gives rise to Rights owned by the Complainant partnership for the purposes of the Policy- albeit Rights which may not be enforceable by the partnership in an action for trade mark infringement at law.
Accordingly the trade mark registration confers Rights on Mr Surgay and the partnership for the purposes of the Policy.
The registration consists of the stylised word mark plus a colourful depiction of a dragon. Does the trade mark registration cover the word only element of the mark and so give rise to rights in the name “Dragon Carp”? A black and white reproduction of the trade mark has been supplied to the Expert. Although the depiction of the dragon is slightly more prominent than the stylised word element of the mark, the words are an essential feature of the overall mark. The Expert is mindful that there is no disclaimer preventing the registration covering the words alone- either in a stylised or a plain form. It is the view of the Expert that the trade mark registration gives rise to rights in the word mark Dragon Carp and that the combination of the words “Dragon and Carp” are sufficiently unusual in everyday usage to provide protection whether the words are set out in plain or stylised form. As such the Registration gives rise to Rights in the name Dragon Carp.
The next point for consideration is whether the Domain Name is identical or similar to the Dragon Carp mark in respect of which the Complainant has rights.
The Domain Name condenses the words Dragon Carp into one word. This difference is of no relevance. The Domain Name is identical to the mark in which the Complainant has successfully asserted its rights.
The first criterion under the Policy has accordingly been met.
The second criterion under clause 2 of the Policy- Abusive Registration
Registration or acquisition in a manner which at the time when the registration or acquisition took place took unfair advantage or was wholly detrimental to the Complainant's Rights.
Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name was registered in a manner which at the time that the registration took place took unfair advantage of or was wholly detrimental to the Complainant’s Rights. The Complainant relies on the following ground set out in Clause 3:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain name;
As a blocking registration against a name or mark in which the Complainant has Rights.
There is no evidence before the Expert about the Respondent’s motive for registering the Domain Name. The Complaint does not record that the Respondent made claims that it wished to block the Complainant’s registration of the Domain Name during the conversation which took place in May 2003. There are facts which invite an inference that the registration was made by the Respondents in bad faith. For example it seems that the registration of the Domain Name occurred at around the time that Mr Surgay applied for his trade mark and seemingly when the Dragon Carp brand had begun to be used by the Complainant. But this coincidence in timing does not necessarily support the fact that a blocking registration was what the Respondents had in mind. The Complainant asks what other reason could the Respondent have had? But this rhetoric does not discharge the Complainant’s responsibility to prove its case on the balance of probabilities- especially given that the Complaint document then conjectures that the Respondent’s delay in using the Domain Name was so that it could get its own website running, presumably in order to use the Domain Name in conjunction with its own website. In the light of such uncertainty the Expert is not in a position to make a finding about whether the Respondent sought to block the Complainant from securing the Domain Name for its own business at the time that it registered the Domain Name in March 2001.
The Complainant’s argument that the Respondent’s lack of use of the Domain Name in recent weeks gives rise to an inference that they want the registration to block the Complainant is irrelevant. The Policy requires the Expert to consider the motivation for registration at the time that registration took place.
The Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name has been used in a manner which took unfair advantage of or was wholly detrimental to the Complainant’s Rights. The Complainant relies on the following ground set out in Clause 3:
There are 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.
In support of this ground the Complainant provides anecdotal evidence that on at least two occasions customers have indicated to the Complainant that the Respondent’s use of the Domain Name had caused them initial confusion. The Complainant also states that it is difficult to ascertain the extent of the damage to its business operations caused by the Respondent’s activities.
Although the anecdotal evidence put forward by the Complainant suggests that in the two instances referred to in the Complaint the initial confusion was dispelled when the customers looked at the Respondent’s site, it is unlikely that the confusion would be dispelled in all cases. The Expert is prepared to infer that a customer seeking Dragon Carp equipment who keys in the name, would expect to be referred to a website which was operated by the Complainant or which at the very least had some kind of business connection to the Complainant. Even if this impression were to be dispelled on entering the site, the Respondent’s website would have succeeded in diverting some customers from purchasing the Complainant’s products for the benefit of the Respondent.
The Respondent’s activities were therefore a blatant instance of a competitor’s mark being taken unfair advantage of and a clear instance of abusive use.
The fact that the link to the Respondent’s site has recently been removed does not save the Domain Name from constituting an Abusive Registration under the terms of the Policy. Historic use can in itself be sufficient to support a finding of Abusive Registration. This is supported by the decision of the Appeal Panel in DRS case 00389 Hanna-Barbera Productions, Inc, v G Hay. In that decision the panel were of the view that Expert is entitled to look at ALL use of the Domain Name from commencement to the date of the adjudication even where the manner of use of the Domain name had changed.
Accordingly the Expert is makes a finding of Abusive Registration based on the use of the Domain Name to link to the Respondent’s site.
The Complainant’s argument that the Respondent’s activities continue to be unfairly detrimental to its Rights by preventing it from exploiting the full commercial value of those Rights by starting its own website is not relevant to this decision under the Policy. The mere fact that the Respondent is preventing the Complainant from operating its own website under the Domain Name does not of itself constitute an Abusive Registration.
8. Decision
The Expert finds that the Complainant has proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that there are Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.
Sallie Spilsbury
Date: 13 September 2003